BOARD OF APPEAL AND ENLARGED BOARD OF APPEAL CASE LAW 2020
IV. PROCEEDINGS BEFORE THE DEPARTMENTS OF FIRST INSTANCE
A. Examination procedure
1. Decisions with no text submitted or agreed by the applicant (Article 113(2) EPC)
(CLB, IV.B.3.2.3 a))
In T 2277/19 the board held that the text referred to in the communication under R. 71(3) EPC had to be regarded as the text intended for grant. Since this text on the basis of which the patent was granted was approved by the appellant, the requirements of Art. 113(2) EPC were met. Thus, the applicant could not be considered to have been adversely affected by the decision under appeal within the meaning of Art. 107, first sentence, EPC. Accordingly, the appeal filed by the applicant was inadmissible pursuant to R. 101(1) EPC.
The appellant had approved the text intended for grant (subject to the correction of some minor errors in the description). Hence, the board considered that the examining division had legitimately expected the applicant to have checked and verified the Druckexemplar, in particular since the applicant had requested some amendments to the text intended for grant. The board found that the examining division did not have any reason to assume that the approval was based on the prerequisite that only drawing pages 1 to 7 were actually intended for publication. Moreover, the appellant expressly waived its right to the issue of a further communication under R. 71(3) EPC. Hence, although R. 71(6) EPC would have allowed the applicant to request further corrections to the communicated text, the appellant did not apparently realise that the documents referred to in the communication under R. 71(3) EPC did not correspond to the documents in its previous request, i.e. the application documents as amended by its letter dated 20 February 2018.
The appellant argued that the facts in the case in hand were very similar to those of decision T 1003/19 with reference also to T 2081/16. In T 1003/19 the board held that agreement to the communicated text was not decisive, since the applicant had not been notified of the text in which the examining division intended to grant a patent, and only in that case would the provisions of R. 71(5) EPC have applied.
The board did not follow T 1003/19 and T 2081/16. In its view there was no legal basis in the EPC for a distinction between the text referred to in a communication under R. 71(3) EPC and that reflecting what the examining division actually intended. Moreover, R. 71(6) EPC addressed the possibility that the text communicated under R. 71(3) did not reflect the appellant's requests. In the board's judgement, Art. 71(3) EPC thus imposed on the applicant a duty to check and verify this text. The fact that an applicant did not exercise its right to request amendments under R. 71(6) EPC could therefore only be interpreted as approval of the communicated text, i.e. the text intended for grant. Whether the applicant noticed a possible error had no effect on the fact that this approval was binding.
2. Approval of the text by the applicant
In T 265/20 the board noted that the applicant (appellant), upon receiving the communication pursuant to R. 71(3) EPC with the text intended for grant, in which drawing sheets 1/4 to 4/4 were missing from the list of documents, made no comments. Instead, it paid the fee for grant and publishing and filed the translations of the claims in the other official languages within the period of 4 months. The board held that the prerequisites for the legal consequence foreseen in R. 71(5) EPC were thus fulfilled. The legal consequence was that the applicant was deemed to have given approval to the text communicated to it under R. 71(3) EPC. The unambiguous wording of R. 71(5) EPC did not allow for an interpretation other than the foreseen legal consequence. Firstly, there was no legal basis in the EPC for a distinction between the text referred to in a communication under R. 71(3) EPC and the text really intended by the examining division (see also T 2277/19, point 1.3 of the Reasons). Secondly, it was not the content of the text which triggered the deemed approval under R. 71(5) EPC, but the applicant paying the fee and filing the translations according to R. 71(5) EPC. It followed that it was pointless to explore the "true will" of the members of the examining division when editing the communication pursuant to R. 71(3) EPC. It was the applicant itself with whom the final responsibility for the text remained, not the examining division.
The board held that it was the applicant's responsibility to check whether the text communicated to it corresponded to what it had requested. The fact that an applicant did not exercise its right to request amendments under R. 71(6) EPC could therefore only be interpreted as consent to the communicated text, i.e. the text intended for grant. Whether or not the applicant noticed a possible error in the text had no effect on the fact that its approval, whether given explicitly or deemed to have been given under R. 71(5) EPC, was binding.
The board further considered that decisions T 1003/19 and T 2081/16 did not amount to diverging case law which required a decision of the Enlarged Board of Appeal pursuant to Art. 112(1) EPC to ensure the uniform application of the law. It expressed that it had no doubt that the wording of R. 71 EPC did not allow it to be concluded that the "true will" of the examining division was something that had to be taken into consideration when making a judgement regarding the deemed approval and its binding effect. Moreover, it could identify no convincing reasons in this respect in the cited decisions. See also chapter V.A.2. "Party adversely affected (Article 107 EPC)".
3. Amendments after the decision to grant
(CLB, IV.B.3.6.; IV.B.3.2.2)
In T 646/20 the board found no support for any obligation of the examining division to defer a decision of grant until the expiry of the four-month period in a case where the applicant had at any given time within this period of time given approval to grant and thereby allowed the examining division to issue a corresponding decision. It would be rather strange if the examining division had to defer a decision for the eventuality that the applicant had second thoughts. In the case in hand, following the R. 71(3) EPC notification, the applicant gave its explicit approval to issue the decision to grant; however, following the decision to grant, the appellant then voiced its disapproval together with a request for further processing – filed on the date that the decision to grant was due to be published in the European Patent Bulletin. The board distinguished the case in hand from T 1/92 (OJ 1993, 685), which related to contradictory statements of the applicant prior to the decision of grant being taken by the examining division. The board in the case in hand was also not convinced by the appellant's argument that an approval sent in response to a R. 71(3) EPC communication could not be interpreted as a waiver of further options or remedies. Every approval of the text of a patent implied a waiver of the remaining infinity of texts in which a patent could be granted.
The board noted in its catchword that further Member States could not be designated after grant. With reference to decision G 1/10 (OJ 2013, 194), the board concluded that in the interest of legal certainty, the patent in the version as granted should no longer be open to amendments and that the applicant had had "adequate means at his disposal" to remedy beforehand. In the board's view, it was incumbent on the applicant to verify the complete file in order to spot any inconsistencies it may wish to draw attention to. Inconsistencies related to text and the designated Member States in the communication under R. 71(3) EPC and not raised in response thereto must be considered as approved by applicant.
4. Withdrawal of the patent application
4.1 Correction of the withdrawal of the application under Rule 139 EPC
In J 6/19 the applicant's request to correct the letter withdrawing the application was received at the EPO on the day on which this letter had been published in the European Patent Register.
The Legal Board recalled that according to the case law, a request for retraction of a letter of withdrawal was no longer possible if the public had been officially notified of the withdrawal (J 10/87, OJ 1989, 323) and if, in the circumstances of the case, even after file inspection, there would not have been any reason for a third party to suspect, at the time of the official public notification, that the withdrawal could be erroneous and later retracted (J 25/03, OJ 2006, 395).
The board noted that the request for withdrawal, which the applicant sought to retract, was unqualified, unambiguous and unconditional and that the request for retraction of the withdrawal would not have been available for file inspection until at least the following day. The board considered that the reasoning of J 25/03, where four days elapsed from the mention of the withdrawal in the European Patent Register to the addition to the file of the request for retraction of the withdrawal, could be applied to the present case. According to this decision the official notification to the public of the withdrawal was a key step and legal certainty would suffer unacceptably if further delay were permitted for retraction of the withdrawal in circumstances, where even after inspection of the file there would not have been any reason to suspect, at the time of the official notification to the public, that the withdrawal, could be erroneous and later retracted. The board in J 6/19 concluded that it was therefore of no relevance to their decision that the request for retraction was received on the same day the withdrawal was published. The time requirement of R. 139 EPC had not been met.
In J 7/19 the board explained that an applicant's ability to correct a withdrawal was subject to several conditions specified by the case law of the boards of appeal, the first of which was the existence of a mistake within the meaning of R. 139, first sentence, EPC, which, according to the case law of the boards of appeal, "may be said to exist in a document filed with the European Patent Office if the document does not express the true intention of the person on whose behalf it was filed" (see J 8/80, OJ 1980, 293; J 4/82, OJ 1982, 385). Therefore, mistakes which resulted in a divergence between the party's actual and declared intent were eligible for correction under R. 139 EPC.
In the case in hand the applicant had mistakenly believed that the claims of the European application did not differ considerably from the claims of the corresponding Japanese application and decided to abandon the application on the basis of this erroneous assumption. The board found there to be no divergence between the applicant's declaration and its true intention and dismissed the appeal. In the case law of the boards, only errors relating to the declaration, its content or its transmission fell under the notion of a mistake within the meaning of R. 139 EPC. The board explained there were good policy reasons for having this limitation. If the notion of a mistake were extended to also cover a scenario where the declaration correctly reflected a party's intentions, but was based on wrong assumptions, any mistaken assessment of the disclosure of the application, the patentability of the invention, the entitlement to priority, the legal provisions or the related case law would make any withdrawal potentially eligible for correction. This would be detrimental to legal certainty. Where the applicant has made a decision on withdrawal without considering all the relevant circumstances, it must bear the consequences.
B. Opposition procedure
1. Filing and admissibility requirements – payment of opposition fee
In the case underlying T 1000/19 the opponent's representatives mentioned in their letter accompanying the notice of opposition (filed two days before expiry of the opposition period) that they authorised the responsible EPO department to debit the opposition fee from their deposit account. However, they failed to indicate the payment method in box X of electronic EPO Form 2300E. The opposition division held that the opposition was deemed not to have been filed (Art. 99(1) EPC).
The board first observed that it was highly questionable whether the case law (e.g. T 1265/10, T 152/82, OJ 1987, 191, and T 806/99) according to which, under certain circumstances, the "intention to pay" a fee by debit order could still be regarded as a valid payment, even if the debit order was deficient, still applied under the version of the ADA in force since 1 December 2017. However, neither this legal question nor the question whether the principle of legitimate expectations applied needed to be decided in the case in hand, as the board considered that R. 139 EPC was applicable and that its requirements were complied with.
The opposition division's view that R. 139 EPC was not "time-barred" and could therefore not be applied to the non-extendable time limit for filing an opposition was rejected by the board as legally incorrect. The board referred to G 1/12 (OJ 2014, A114), in which the Enlarged Board had found that the procedure for correcting errors under R. 139, first sentence, EPC was available in cases of an error in the appellant's name in a notice of appeal. The board noted that the issue whether a notice of appeal contained the name and address of the appellant was inextricably related to the question whether the appeal had been validly filed within the time limit under Art. 108, first sentence, EPC. There could be no doubt that the ratio of G 1/12 also applied if the admissibility of an opposition, or the question whether an opposition was deemed to have been filed, was concerned (T 615/14, T 579/16). Furthermore, the board saw no reason why the lines of reasoning set out in G 1/12 regarding the applicability of R. 139 EPC should not equally apply to a correction of incorrectly filled-in payment form (see T 317/19). Rather, the applicability of R. 139 EPC to debit orders had been acknowledged or at least not ruled out by the boards of appeal (T 152/82, T 17/83 of 20 September 1983).
The board noted, with reference to T 152/85, that R. 139 EPC only applied to a mistake made in a document, not to a factual mistake. Here, the opponent had filed EPO Form 2300E and hence a document within the meaning of R. 139, first sentence, EPC; the mistake in the document was that the payment method was not activated. The board was also satisfied that the requirements for corrections under R. 139, first sentence, EPC as referred to in G 1/12 were fulfilled.
2. Late submissions – concept of "in due time"
In T 2734/16 the board held that a new line of attack on inventive step pursued in response to and using the documents submitted by the patent proprietor with its reply to the opposition should not be considered late filed per se. For reasons of "equality of arms", the new attack could be admitted into the opposition proceedings even if the documents ultimately proved no more relevant than other documents. In the case in hand, the patent proprietor had asserted that the large-scale road milling machines illustrated by the examples in the documents submitted with its reply to the opposition formed the closest prior art. In these circumstances, the appellant had to be entitled, with a view to ensuring equality of arms, to take the facts first brought to its attention by the new documents submitted by the opposing party and use them for its own ends in a counterattack relying on them as new arguments against inventive step. Since this counterattack had only become possible once the respondent had submitted these documents in its own defence, the board, having considered all the circumstances, did not deem it appropriate to refuse the new line of attack on the grounds of late filing and irrelevance of the documents on which it was based. See also under chapter V.A.6.4 "State of proceedings – procedural economy – RPBA 2007".
3. Amendments in opposition proceedings
3.1 Rule 80 EPC
In T 2450/17, paragraph  of the patent specification contained an incorrect reference to the prior art as a result of an amendment during the grant proceedings. At the oral proceedings before the board, the appellant submitted an amended paragraph , from which the inaccurate information had been deleted. The board refused to refer the case to the Enlarged Board of Appeal since it was able to address the appellant's questions on the basis of the boards' established case law. As to whether the contested amendments were admissible under R. 80 EPC, the board noted that the case law had it that references to relevant prior art as defined in R. 42(1)(b) EPC could be added at a later stage without this necessarily being deemed an inadmissible extension of the subject-matter of the application. However, such references designed to delimit the relevant prior art should not be incorrect or misleading, otherwise they could indeed alter the subject-matter of the patent. Remedying inaccuracies of this kind thus did not contravene Art. 123(2) EPC; on the contrary, doing so was appropriate and necessary for ensuring compliance with that provision. Deleting incorrect information about the prior art from which the patent specification was to be distinguished was thus appropriate for addressing the ground for opposition under Art. 100(c) EPC. The board also concluded that it was wrong to say that any amendment to an incorrect reference to the prior art permitted under R. 80 EPC (as it was occasioned by Art. 100(c) EPC) automatically constituted a breach of Art. 123(3) EPC. It noted that R. 80 EPC was satisfied if the patent documents were amended to overcome a potentially relevant ground for opposition and that, in the case in hand, the scope of protection had not been extended.
In T 1285/15 the last sentence of a paragraph of the patent was deleted to bring the description into line with an intermediate set of claims that had been amended to meet objections made by the opponents. The board observed that the amendment was therefore occasioned by a ground for opposition under Art. 100 EPC and complied with the requirements of R. 80 EPC when it was carried out. The board underlined that the very language of R. 80 EPC ("... occasioned by a ground for opposition ...") made clear that the situation at the time of the amendment needed to be considered when compliance with this provision was examined. The fact that the claims were amended again at a later stage and that, as a consequence, the deletion of the sentence was no longer required, did not lead to the conclusion that the amendment of the description retroactively contravened R. 80 EPC. The original amendment could still be said to have been occasioned by a ground for opposition.
In T 2063/15 the request at issue comprised two independent claims. However, whilst claim 2 was based on a combination of claims 1 and 9 as granted, claim 1 of auxiliary request 3 was based on a combination of claims 1 and 2 as granted and also additional features taken from the description. The board explained that, with the subject-matter of claim 1 as granted having been found not to be novel, one or more independent claims based on a combination of claim 1 as granted with features of granted claims dependent upon claim 1 could be understood to be occasioned by the ground for opposition under Art. 100(a) EPC. However, with reference to G 1/84 (OJ 1985, 299), T 610/95 and T 223/97, the board held that the inclusion of the additional independent claim 1, based on claims 1 and 2 as granted in combination with features taken from the description, was no longer simply occasioned by a ground for opposition, since this ground was already addressed through the filing of independent claim 2; the additional independent claim 1 furthermore introduced claimed subject-matter which had no counterpart in the claims of the granted patent (see e.g. Case Law of the Boards of Appeal, 9th ed. 2019, IV.C.5.1.5 b)).
Likewise in T 1764/17 the board emphasised that the replacement of a granted single independent claim by two or more independent claims could only in exceptional cases be considered to be occasioned by a ground for opposition. An exception could arise if two granted dependent claims were linked in parallel to a single independent claim. Then the filing of two independent claims including each one of the two parallel claim combinations might be possible, thus allowing separate fragments of the scope of protection afforded by the patent as granted to be retained. However, this exception did not apply to the addition of an independent claim directed at an aspect of the invention that was not included in the granted set of claims. In the case in hand, at least one of the two independent claims in the auxiliary requests at issue was directed at subject-matter that incorporated new features extracted from the description, which could moreover be material for the issue of patentability. These independent claims were thus not straight combinations of granted claims and the above exception did not apply.
3.2 Time frame for filing amendments
In decision T 756/18 the board found that the opposition division had overstepped the limits of its discretion by stating that it would admit only one auxiliary request and rejecting all other auxiliary requests from the outset for no apparent reason; it did not even examine whether the amendments could have overcome all the objections validly raised up to that point without giving rise to any new ones – which might have rendered them admissible. No abuse of procedure or delaying tactic on the part of the appellant was apparent from the file.
In T 966/17, the appellant (patent proprietor) argued that the opposition division had infringed its right to be heard by refusing to admit the auxiliary requests it had filed at the oral proceedings.
The board first of all observed that the opposition division's discretion in deciding whether to admit amended claims followed in essence from Art. 123(1) EPC (first sentence) in conjunction with R. 79(1) and 81(3) EPC and stated the following reasons. Art. 123(1) EPC provided that a European patent application or a European patent could be amended in proceedings before the EPO in accordance with the Implementing Regulations. In opposition proceedings, R. 79(1) EPC further allowed the patent proprietor to amend the description, claims and drawings within a period set by the opposition division. Later amendments, by contrast, were admissible only at the opposition division's discretion, as was clear from R. 81(3) EPC for instance ("shall, where necessary, be given the opportunity").
The board then considered that the opposition division's expression of a different opinion at the oral proceedings from the one provisionally set out in the communication accompanying the summons was not enough by itself to deprive it of that discretion and oblige it to admit whatever requests were filed at the oral proceedings. The appellant had invoked the decision in T 688/16, but the board found it irrelevant because, in contrast to the situation there, the auxiliary requests filed by the appellant in the case in hand would have needed to deal with an Art. 123(2) objection already raised during the written proceedings. It was permissible, the board held, for the decision on admitting new requests filed by the appellant in response to a new line of attack taken by the opponent on the basis of a newly filed document to take into consideration whether those requests were prima facie allowable or would anyway have to be refused owing to other objections already raised at a previous stage in the proceedings.
The board went on to make it clear that parties to adversarial proceedings were not entitled to "detailed guidance" from the decision-making department on how to overcome a deficiency at issue. It was instead each party's own responsibility to come up with a suitable answer to the case made by the opposing party.
In T 84/17 the appellant (patent proprietor) requested that the decision of the opposition division not to admit its auxiliary requests, submitted during first-instance oral proceedings, be overturned for improper exercise of discretion. It argued that the opposition division had not exercised its discretion in accordance with the right principles, as it had only considered the timeliness of the filing without also considering the prima facie allowability of these requests.
The board, however, concluded that the opposition division had in fact exercised its discretion in a reasonable way and had used the correct principles as set out in G 7/93 (OJ 1994, 775, referred to in T 129/12, T 2415/13). The opposition division had correctly stressed that the auxiliary requests had been filed very late without appropriate justification, the underlying objections having been on file since the notice of opposition and their pertinence commented on in the annex to the summons. In the board's view, the admittance of certain documents, which had been filed by the respondents in response to the opposition division's communication, did not result in the introduction of new arguments that could have justified the filing of the auxiliary requests. Moreover, the opposition division's decision not to admit the requests was not exclusively based on the unjustified lateness but also on the finding that the opponents could not be expected to deal with the specific restrictions of subject-matter introduced with these requests, i.e. the opposition division also considered the substance of the amendments.
In the board's opinion, in the given circumstances, there was no need to discuss all criteria that could theoretically influence the discretionary decision. Rather, if the arguments in the particular case showed that some criteria weighed so heavily that other criteria could not outweigh them, it was not necessary to discuss all criteria. None of the decisions cited by the appellant (T 463/95, T 1485/08, T 544/12) contradicted this finding, as none stated or implied that the right principles for exercising discretion required that the opposition division must always assess the prima facie allowability of a new request.