7.1 General remarks 

If the opposition division does not consider it expedient to schedule oral proceedings of its own motion (see E‑III, 4 and below) or the taking of evidence even where the latter is requested (see E‑IV), and if no admissible request for oral proceedings has been received from a party (see E‑III, 2), the decision must be reached on the basis of written proceedings. In this case there is no obligation to schedule oral proceedings before a decision is reached.

If the case is decided on the basis of written proceedings, submissions filed after the decision has been handed over for notification by the EPOto the EPO internal postal service for remittal to the parties can no longer be considered, as from that moment the division cannot amend the decision (see G 12/91) except to the limited extent provided for in Rule 140 (see H‑VI, 3.1).

The decision, whether or not preceded by oral proceedings or the taking of evidence, may be to revoke the patent (see D‑VIII, 1.2), to reject the opposition (see D‑VIII, 1.3) or to maintain the patent as amended (see D‑VIII, 1.4).

A decision can and will be taken immediately if all the following conditions are fulfilled:

(a)the relevant facts need no further inquiries

(b)all parties have had adequate opportunity to comment on the points material to the decision (cf. E‑IX, 1.1)

(c)there is no request for oral proceedings from a party adversely affected by the envisaged decision

(d)there is no time limit running (e.g. for filing observations, comparative tests, etc.)

(e)there are no other special circumstances which would make an immediate decision impossible, e.g. a pending request for transfer of the patent.

Examples where an immediate decision is possible

The opposition division can issue an immediate decision revoking the patent if all the following conditions are fulfilled:

(i)the proprietor was invited to file observations in accordance with Rule 79(1) (see D‑IV, 5.2)

(ii)the proprietor has not filed amendments (including any auxiliary requests)

(iii)the proprietor has not requested oral proceedings

(iv)the opposition division, based on facts, evidence and arguments on file, fully agrees with at least one ground for opposition in the notice of opposition

(v)there are no other special circumstances which would make an immediate decision impossible.

In the case of a direct revocation, the proprietor's right to be heard will have been respected as long as the opposition division only uses facts, evidence and arguments contained in the notice of opposition as a basis for the decision to revoke the patent. In that case, the proprietor:

(a)was informed of the grounds for opposition and supporting facts, evidence and arguments based on which the patent was to be revoked, and

(b)was given the possibility to comment on them.

A decision to immediately reject the opposition can be issued if all of the following conditions are fulfilled:

(i)The opponent has been given an adequate opportunity to reply to the proprietor's observations. In general, this condition is met if at least two months have passed since receipt of the proprietor's observations, provided that the opponent has not announced the intention to submit a (more) substantive reply to the proprietor's observations; the condition is also met if the opponent has already replied to the proprietor's observations of their own motion

(ii) The opponent has not requested oral proceedings

(iii)The proprietor has requested the rejection of the opposition as their main request (i.e. the proprietor has not filed amended patent documents as their main request)

(iv)The opposition division, based on facts, evidence and arguments on file, fully agrees with the proprietor that none of the grounds for opposition in the notice of opposition prejudice the maintenance of the patent

(v)There are no other special circumstances which would make an immediate decision impossible.

Examples where an immediate decision is not possible:

(a)As a result of the analysis in a parallel case the division concludes that a document mentioned in the specification of the opposed patent, but not cited by the opponent, is clearly novelty-destroying; the decision to revoke the patent may only be based on this document if the parties have been given an opportunity to comment (cf. E‑IX, 1.1)

(b)The opposition division is of the opinion that none of the grounds for opposition cited by the opponent prejudice the maintenance of the patent; however, at least one new fact that has not been mentioned by the proprietor needs to be introduced by the division (e.g. the fact that a document cited by the opponent does not constitute prior art).

In both cases, the opposition division will summon the parties to oral proceedings and present its position in the annex to the summons.