BOARDS OF APPEAL
Decisions of the Technical Boards of Appeal
Decision of Technical Board of Appeal 3.4.1 dated 24 April 1991 T 3/90 - 3.4.11
Composition of the Board
G. D. Paterson
H. J. Reich
Y. van Henden
Patent proprietor/Respondent: British Telecommunications PLC
Opponent/Appellant: Deutsche ITT Industries GmbH
Headword: Oral proceedings/ BRITISH TELECOMMUNICATIONS PLC
Article: 116(1) EPC
Keyword: "Oral proceedings; withdrawal of request by non-representation"
If oral proceedings are appointed as a result of a party's request for such proceedings on an auxiliary basis, and if that party subsequently states that it will not be represented at the oral proceedings, such a statement should normally be treated as equivalent to a withdrawal of the request for oral proceedings.
Summary of Facts and Submissions
I. The respondent is owner of European patent No. 0 070 691.
II. This patent was opposed by the appellant ...
III. The Opposition Division rejected the opposition ...
IV. An appeal against this decision ... was lodged by the opponent
V. Both parties requested oral proceedings on an auxiliary basis. In a communication annexed to a summons to oral proceedings the Board informed the parties of its provisional view that the teachings of the documents appeared to have no influence on the decision to be taken and might therefore be disregarded under Article 114(2) EPC.
In response to this communication of the Board, the appellant contested in writing the Board's opinion, citing additionally the document: ...
Furthermore, he stated that "no representative would be sent to the oral proceedings" The Registrar of the Board confirmed with the appellant that this statement was equivalent to a with drawal of his request for oral proceedings. Subsequently, the scheduled oral proceedings were cancelled by the Board.
VI. The appellant requested that the decision under appeal be set aside and that the patent be revoked.
VII. The respondent requested:
... that oral proceedings be held in the event that the Board intends to revoke the patent (third auxiliary request).
Reasons for the Decision
1. Procedural matters oral proceedings
As set out in paragraph V above, both parties originally requested oral proceedings on an auxiliary basis; according to the established practice of the Boards of Appeal, this is interpreted as a request for oral proceedings unless the Board intends to decide the case in favour of the requesting party. The Board then issued a communication under Article 11 (2) of the Rules of Procedure of the Boards of Appeal, in which it indicated as a preliminary view that it was likely to decide in favour of the respondent. Oral proceedings were therefore appointed because of the appellant's request for such proceedings. The appellant then stated inter alia that it would not be represented at the oral proceedings. In such circumstances, such a statement is clearly equivalent to a withdrawal of the appellant's earlier request for oral proceedings on an auxiliary basis. (This was in fact confirmed on the telephone by the Registrar in the present case, although such confirmation was not really necessary).
After the Board had considered the appellant's observations in reply to its communication and had internally confirmed its intention to decide the case in favour of the respondent's main request, the oral proceedings were therefore duly cancelled by the Board.
2. The only substantive issue specifically raised in this appeal is that of inventive step
1 This is an abridged version of the decision A copy of the full text in the language of proceedings may be obtained from the EPO Information Desk in Munich on payment of a photocopying fee of DEM 1.30 per page