T 0914/98 22-09-2000

1. The appeal complies with the formal requirements of Articles 106 to 108 and Rules 1(1) and 64 EPC. It is therefore admissible.

2. In section VII-C, 2.3 of the above-mentioned case law compendium there are discussed several decisions which are concerned with the question of the time that should be allowed for a response to an EPO Communication to "take note". In both of T 275/89 (OJ EPO 1992, 126) and T 494/95 the respective Board considered that a sufficient time to be given to a party for filing an adequate response was a minimum of one month. The Board in T 263/93 went further and stated that the right to a fair procedure required that the opposition division should have waited at least two months before issuing a decision, unless these are exceptional circumstances in which a shorter period of time is acceptable.

The underlying basis for the findings of the respective Boards in the decisions mentioned above is the fundamental requirement of Article 113(1) EPC that the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. In this context the terms "grounds or evidence" is not to be interpreted narrowly but should be understood as referring to the essential legal and factual reasoning leading to the decision T 951/92, OF EPO 1996, 53). Furthermore, the opportunity to present comments must be a genuine and realistic one in the circumstances of the case and not merely theoretical.

In the present case the Board is satisfied that the reasoning given in the contested decision contains essential elements derived specifically from the reply of the respondents to the notice of opposition. In particular, with respect to the question of novelty, the Opposition Division states at the end of point 8.1 that it "follows the argumentation brought forward by the patentees that the cross-section of the safety bar as known from document D1 is not open". With respect to the question of inventive step the Opposition Division states in the first paragraph of point 8.3 that safety bars with closed and open cross-sections serve "a different purpose", "in that the first kind aims to be as rigid and resistant as possible whereas the second kind tends to deform elastically and plastically in a pre-defined manner". It is not possible to derive anything conceptually equivalent to this statement either from the patent specification itself as has been suggested by the respondents, or from the notice of opposition.

Having regard to the case law mentioned above the seventeen day period which elapsed between the appellants receiving the reply of the respondents on 13. July 1998 and the handing over of the decision to the EPO internal postal service on 30 July 1998 was manifestly too short to give the appellants an adequate opportunity for comment. The respondents have suggested that the appellants should have informed the Opposition Division within this period that a substantive reply would be forthcoming. The Board cannot agree as having regard to the case law the appellants could not reasonably have expected a decision to be issued so quickly.

In their written and oral submissions the respondents relied in the main on the extensive general considerations contained in decision T 494/95 (supra) as providing a basis for the conclusion that where the reply to the notice of opposition does not contain any new facts or evidence on which a decision to reject the opposition is to be based then the Opposition Division is free to issue this decision once it has communicated the reply to the opponents "to take note" and is therefore not obliged to wait even a relatively short period of time to enable the opponents to comment. That interpretation of the decision seems however distinctly at odds with the facts of the case involved and the specific finding in point 2.8 of the grounds that the actual length of time of more than one month between the sending of the reply of the patentees to the opponents and the issue of the decision was sufficient to give them a realistic opportunity to comment or at the very least to inform the Opposition Division that it intended to comment. In any case, the submissions of the respondents are predicated on the assumption that the reasoning of the contested decision does not contain essential elements derived from the reply to the notice of opposition, with which as explained above, the Board cannot agree.

3. For the above reasons the Board is satisfied that the contested decision is procedurally flawed in a fundamental manner in that the appellants were denied their right to comment on the grounds on which the decision was based (Article 113(1) EPC).

According to Article 10 RPBA a Board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise. The respondents see such a reason in the present case in the fact that infringement proceedings against the appellants have been opened before the German courts and argue that the unavoidable delay in reaching a final decision associated with a remittal would seriously disadvantage them in the exercise of their rights deriving from the patent. Nevertheless, the Board remains of the opinion that the fundamental right of the appellants to a fair hearing before the Opposition Division must outweigh any advantage that might accrue to the respondents by having the Board deal fully with the case rather than remit it. In this context the Board notes that the infringement action was taking its normal course before the German courts and had not been stayed to await the outcome of the opposition.

4. Having regard to the remittal of the case to the first instance by reason of a substantial procedural violation, according to the appellants' main request, reimbursement of the appeal fee is equitable (Rule 67 EPC).