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Law & practice

EPO Boards of Appeal Case Law 2018 and 2019

V. PROCEEDINGS BEFORE THE BOARDS OF APPEAL

A. Appeal procedure

1. Filing and admissibility of the appeal

1.1 Party adversely affected (Article 107 EPC)

(CLB, V.A.2.4.2 c))

In T 611/15 the opposition division maintained the patent in amended form based on auxiliary request VIII. The proprietor had argued that it had withdrawn only the auxiliary requests filed in writing before the oral proceedings, not the main request. However, the minutes stated that the representative of the proprietor announced that he would withdraw all other requests so that auxiliary request VIII as filed during the oral proceedings represented the main and sole request of the proprietor. In the absence of any request for correction of the minutes, the board assumed that these statements accurately reflected the state of the proprietor's requests. Given that the decision on this request was in favour of the proprietor it followed that the proprietor was not adversely affected by the decision.

1.2 Appeal filed within the time limit – correction of error

(CLB, V.A.2.5.3)

In T 317/19 the appellant filed the notice of appeal within the two-month time limit; it contained the following sentence: "We are paying the appeal fee from our deposit account of the attached fee sheet." However, due to an error in the "Method of payment" box on Form 1038E (the box did not indicate a method but stated "not specified"), the debit order for the payment of the appeal fee was not carried out before expiry of that time limit. Following the opinion G 1/18 (OJ EPO 2020, A26) this resulted in the appeal being deemed not to have been filed. To change the above result, the appellant filed a request for correction under R. 139 EPC.

The board referred to G 1/12 (OJ EPO 2014, A114) where the Enlarged Board affirmed that a correction of errors under R. 139 EPC in documents filed with the EPO is generally applied. The board was aware that the Enlarged Board had made its findings only in the context of the correction of an error in the appellant's name. However, the board failed to see why it should not equally apply to a correction of an erroneously filled payment form.

In the case in hand the appellant met the requirements for a correction under R. 139 EPC as summarised in G 1/12. The appellant originally intended to pay the appeal fee via Form 1038E. This was also immediately apparent. Furthermore, the error to be remedied was an incorrect statement in a document filed with the EPO, namely the wrong indication in the "Method of payment" box on Form 1038E. Finally, the appellant filed its request under R. 139 EPC only nine days after the examining division's communication which had hinted at the fact that the payment of the appeal fee had not been carried out. The board concluded that the requirements for the correction were met. As a consequence, the appeal was retroactively deemed to have been filed. Thus, an error in a duly filed form for paying the appeal fee may be corrected under R. 139, first sentence, EPC.

1.3 Statement of grounds of appeal

1.3.1 Content of the statement of grounds of appeal

(CLB, V.A.2.6.3 c))

Under Art. 108, third sentence, EPC in conjunction with R. 99(2) EPC, the statement of grounds of appeal must indicate the reasons for setting aside the decision. It is the boards' settled case law that this statement has to deal with all the main reasons for the contested decision in order to be considered sufficient for the purposes of admitting an appeal. In T 1904/14 the board held that to apply even where the reasoning in the contested decision was wrong or contradictory.

In the contested decision in that case, the examining division had concluded that the subject-matter of claim 1 of the then first auxiliary request, which was identical to the main request on appeal, was not clear within the meaning of Art. 84 EPC. A lack of clarity was a main reason in the decision why none of the requests had been grantable. But the appellant had not addressed this ground for refusal at all in its grounds for appeal. It had argued neither that the claims objected to were clear nor that the reasoning for the decision reached under Art. 84 EPC as regards the then auxiliary requests was wrong, contradictory or otherwise inadequate. Nor had it filed any new requests to overcome the clarity objections.

Instead, it had complained of a contradiction in the contested decision's reasoning only in response to the board's preliminary opinion. But the R. 99(2) EPC requirement for admissibility – a sufficient statement of grounds of appeal – had to be met by the deadline in Art. 108, third sentence, EPC for filing it; it could not be met retroactively by a late submission.

Hence the appellant's allegation, first brought forward in the aforementioned letter, that the examining division had committed a procedural error due to the inadequate reasoning of its decision, should also already have been raised in the grounds of appeal. A wrong, contradictory or incomplete decision did not absolve an appellant of the need to address such deficiencies there. Consequently, the appeal had to be rejected as inadmissible.

1.3.2 References to submissions made at first instance

(CLB, V.A.2.6.4 a))

In T 16/14, on the relevance of documents E1/E1a and E2/E2a for the patentability of the subject-matter of claim 1 according to the main request, the board observed that the appellant's statement of grounds of appeal merely referred to its notice of opposition and written submissions at first instance, i.e. to the written case it had made as opponent in those first-instance proceedings. Under Art. 12(2) RPBA 2007, the statement of grounds of appeal had to contain the party's complete case and specify expressly all the facts, arguments and evidence relied on and it was the boards' settled case law that a statement referring generally to submissions at first instance was usually insufficient. The appellant ought to have dealt explicitly with the substance of documents E1/E1a and E2/E2a in its statement. The board therefore concluded that the requirements of Art. 12(2) RPBA 2007 were not met by the mere reference to the case made at first instance and that the submissions on documents E1/E1a and E2/E2a therefore had to be disregarded on appeal in accordance with Art. 12(4) RPBA 2007.

2. Facts under examination – applying Article 114 EPC in appeal proceedings

2.1 Fresh ground for opposition on appeal

(CLB, V.A.3.2.1 h))

In T 184/17 the respondent (opponent) for the first time raised an inventive step objection which was neither raised and substantiated in the notice of opposition nor discussed during opposition proceedings. The appellant (patent proprietor) submitted that the inventive step objection constituted a fresh ground for opposition and did not consent to its introduction into the appeal proceedings, see G 10/91. According to G 10/91 (OJ EPO 1993, 408) a fresh ground for opposition (a ground neither raised and substantiated in the notice of opposition nor discussed during opposition proceedings) may in principle not be introduced at the appeal stage. The Enlarged Board held that an exception to this principle was justified if the patent proprietor agreed to its introduction.

The board stated that the new objection relied on the same passages and teaching of the document as the unsuccessful novelty objection, duly raised and substantiated with the notice of opposition. In other words, the lack of inventive step attack as raised on appeal stayed within the factual and evidentiary framework relied upon by the opponent in the notice of opposition under the ground of Art. 100(a) EPC for novelty.

The board raised the question as to whether under such special circumstances, the new objection still fell under the principle as expressed in G 10/91, or whether it could be admitted into the appeal proceedings without the agreement of the patent proprietor. In the board's view what was decisive was that both lack of novelty and lack of inventive step were argued within the same factual and evidentiary framework, meaning that the passages and teachings relied upon by the opponent for substantiating both objections as well as the main body of the argument were the same, but only the legal conclusions drawn therefrom differed.

The board held that even when the ground of inventive step was neither raised and substantiated in the notice of opposition nor discussed during opposition proceedings, an objection of lack of inventive step could exceptionally be examined in the appeal proceedings without the agreement of the patent proprietor, if it stayed within the same factual and evidentiary framework of a novelty objection properly raised and substantiated in the notice of opposition. This does not mean that the ground of lack of inventive step starting from the same prior art is always implicit in a properly substantiated allegation of lack of novelty. It rather applies exclusively to a case such as the case in hand, where, after having validly raised lack of novelty in opposition on the basis of a given document and passages cited therein, the ground of lack of inventive step is subsequently invoked on appeal based only on that document and the same passages, and where therefore the factual and evidentiary framework is substantially the same.

2.2 The board need not examine facts of its own motion

(CLB, V.A.3.4.2)

The board in T 2501/11 stated in its catchword: where prior publication of a citation has been admissibly disputed and the party bearing the burden of making the case for and proving it fails to provide a substantiated response, the board cannot treat that citation as prior art because opposition appeal proceedings are adversarial and so conducted in accordance with the adversary system of procedure, in which it is for the parties to make their cases and the boards' power to examine the facts of their own motion (Art. 114(1) EPC) is limited.

3. Review of first-instance discretionary decisions

3.1 Submissions admitted at first instance – part of the appeal proceedings

(CLB, V.A.3.5.4)

In T 1227/14 the board observed that the boards did not have the power to disregard on appeal submissions admitted by the opposition division in exercise of its discretion. The EPC did not provide a legal basis for excluding, in appeal proceedings, documents which were correctly admitted into the first-instance proceedings, in particular when the impugned decision was based on them (T 1852/11, T 1201/14). See also T 1525/17 in chapter IV.B.2.2.

4. New submissions on appeal

4.1 Amendments after arrangement of the oral proceedings

(CLB, V.A.4.5.1 b))

In T 156/15 the appellant filed auxiliary request 19 after the chairman had announced the results of the board's deliberation on the main request and auxiliary requests 1 to 18, and filed auxiliary request 20 after the chairman had announced the result of the board's deliberation on auxiliary request 19. By its behaviour, the appellant (patent proprietor) was, as a matter of fact, adjusting its strategy to the results of the board's deliberation, which put the appellant (opponent) in a position where it was difficult to react. In deciding on the admission of such late-filed requests, respect for the principle of fairness of the procedure might make it immediately apparent that these requests should not be admitted, even without also considering specific criteria for the exercise of the board's discretion such as prima facie allowability.

In T 656/16, auxiliary requests 8A and 8B were not filed until the oral proceedings before the board. The boards frequently take the approach of admitting requests not filed until after oral proceedings have been arranged only if, in particular, they are clearly or manifestly allowable, which means that it must be immediately apparent to the board, with little investigative effort on its part, that the amendments made successfully deal with the issues raised without giving rise to new ones. As auxiliary requests 8A and 8B did not meet that requirement, the board, exercising its discretion under Art. 13(3) RPBA 2007, decided at the oral proceedings not to admit them. The respondent (patent proprietor) then filed another auxiliary request (8C). However, the board considered that the respondent had already had an opportunity on filing auxiliary requests 8A and 8B to overcome the reservations it had expressed before their filing about the then pending requests. The respondent had consciously declined that opportunity, preferring instead to deal with the board's reservations only bit by bit. For reasons of fairness, in particular procedural fairness, and of procedural economy, neither the board nor the other parties to the proceedings could reasonably be expected to accept that. The board therefore exercised its discretion to refuse to admit auxiliary request 8C too. The patent was revoked.

4.2 Communication of a board of appeal

(CLB, V.A.4.7.)

In T 2072/16 the claim set of auxiliary request 15 was submitted for the first time at a late stage of the oral proceedings before the board. The appellant argued that the filing of that claim set was an appropriate reaction to the board's claim interpretation and novelty objection under Art. 54(3) EPC. It only now understood the interpretation, in particular of features (c), (d) and (f) of claim 1, as given in the board's preliminary opinion and thus had to be given an opportunity to react properly. As regards the issue of whether filing the new auxiliary request was indeed an "appropriate reaction" to any unforeseeable development or objection becoming apparent during the oral proceedings, the board had to establish whether a development was unforeseeable and whether the reaction was indeed filed at the earliest point in time, i.e. whether it was an immediate reaction to an objection (see e.g. T 1990/07, T 1354/11) and whether it attempted to at least address – if not resolve – the outstanding objections, i.e. whether it was causally linked to the features objected to.

In the case in hand, the board's communication clearly indicated the board's interpretation of claim 1 and its provisional opinion that features (a) to (f) and (i) did not appear to establish novelty over document A2. The earliest point in time at which a party should make new submissions (such as an amended claim set) must be the time at which – on an objective basis – an unforeseeable event (such as a fresh objection) becomes apparent during the proceedings. Accordingly, the earliest point in time for filing the amendment according to feature (c') could have been, for example, upon submitting the appellant's response to the board's communication under Art. 15(1) RPBA 2007. The board decided not to admit the auxiliary request 15 into the appeal proceedings under Art. 13(1) RPBA 2007.

4.3 Late submission of new arguments, objections and lines of attack in appeal proceedings

(CLB, V.A.4.10.1)

The board in T 1914/12 held (contrary to T 1621/09) that the boards did not have any discretion when it came to the admissibility of late-filed arguments based on facts already in the proceedings. Invoking Art. 114 EPC, which in English referred to arguments (as well as to facts and evidence) in paragraph 1, but not in paragraph 2, it concluded that the discretion conferred by paragraph 2 did not extend to late-filed arguments and observed that this was in line with the pre-2011 case law (e.g. T 92/92, T 861/93, T 131/01, T 704/06, T 926/07 and T 1553/07). It noted that two decisions had been taken in September 2011 – T 1069/08 and T 1621/09 – in which that case law had been questioned on the basis of Art. 13(1) in conjunction with Art. 12(2) RPBA 2007 and it had been concluded that the boards did have some discretion when it came to late-filed arguments. However, it was unconvinced by the reasoning underlying these decisions. Their interpretation ignored the fact that Art. 114(2) EPC provided no justification for such discretion, as the older case law had held many times. In English at least, the EPC, and in particular Art. 114 EPC, treated facts and arguments differently. More specifically, Art. 114(2) EPC explicitly conferred discretion for late-filed facts but not for late-filed arguments based on facts already in the proceedings. In the board's view the RPBA, although they could provide more detail on and help in interpreting the EPC, could not give the boards powers that the EPC did not.

In T 47/18 the statement of grounds of appeal contained neither an objection of lack of clarity of the claims nor an objection under Art. 123(2) EPC. It contained only submissions with respect to inventive step. It was only after the parties had been summoned to oral proceedings that the opponent raised such objections. The board referred to the established case law that new objections, which had not been raised in the statement of grounds of appeal, were considered an amendment to a party's case. Admission of such objections was at the discretion of the board pursuant to Art. 13(1) and/or 13(3) RPBA 2007 (T 996/15 for a new objection under Art. 84 EPC; T 682/11 for a new objection under Art. 123(3) EPC; T 1307/13 for a new objection regarding the validity of the priority claim). The board stated that, furthermore, the objections in question also did not merely constitute a new argument (T 1914/12, see above) because they went beyond submissions serving to underpin the facts, evidence and grounds filed in good time. Rather, they were based on new legal grounds (G 4/92, OJ EPO 1994,149 point 10 of the Reasons) that had not been addressed before in the appeal proceedings. The board pointed out that the appellant could have raised the objections in question at several instances in the proceedings before the opposition division. There was no sound reason to raise these objections at such a late stage of the proceedings, i.e. only about two months before the oral proceedings before the board.

In T 603/14 the board exercised its discretion not to consider the late-filed objection of lack of inventive step in view of D1 and D3. The appellant raised this objection for the first time in the oral proceedings before the board. The documents formed part of the appeal proceedings. The board stated that the objection represented an amendment to the appellant's case and might as such, pursuant to Art. 13(1) RPBA 2007, be admitted and considered at its discretion. Document D1 and D3 had up to that point only been used to support objections of lack of novelty of claim 1 and claim 25. At least the allegation that they led, in combination, to a lack of inventive step was to the board a new fact.

The appellant did not present a convincing justification for the late submission of this alleged new fact. The board's preliminary opinion on the disclosure of D1 did not introduce any new aspects into the discussion. The annex to the summons stated clearly that any further comments, documents or requests should be at the disposal of the board and the other party one month before the oral proceedings at the latest and should not surprise the other party and the board. Admittance of the objection at this late stage would therefore not have respected the required procedural efficiency. Rather it might even have borne the risk of having to adjourn the oral proceedings. Even if one accepted that D1, having been cited to support an objection of lack of novelty, could have been expected to be used as a starting point for an objection of lack of inventive step, the other party could not be expected to anticipate any arbitrary combination of D1 with other documents on file, such as D3, to be introduced into the proceedings. Furthermore, a document useful for assessing novelty is not necessarily a legitimate choice as closest prior art; see also T 181/17.

4.4 Article 12(4) RPBA 2007

4.4.1 Broadening of claims considered by the opposition division

(CLB, V.A.4.11.3 e))

In T 1719/13 the auxiliary request corresponded to auxiliary request 1 found allowable by the opposition division, except for the addition of dependent claim 5. The board found that there was no convincing reason to admit this request into the proceedings. The board referred to the consistent case law that the opposition proceedings may not be used to tidy up the patent by adding one or more dependent claims; such an addition was normally inadmissible under R. 80 EPC (see for instance T 993/07). By the same token, the board considered the addition of one or more dependent claims in appeal proceedings to a claim request held allowable by the opposition division to be an attempt to tidy up the allowable claim request and thus not admissible under Art. 12(4) RPBA 2007.

In T 1467/13, in the opposition proceedings the patent proprietor had sought maintenance on the basis of new requests that were now, on appeal, its main and first to eighth auxiliary requests. Those requests had therefore defined the scope of the proceedings at first instance. In its ninth to thirteenth auxiliary requests, filed with its statement of grounds of appeal, a feature had been deleted. Their subject-matter was thus, with no apparent justification, outside the scope of the proceedings as defined at first instance. Based on Art. 12(4) RPBA 2007, it therefore should have been filed in the first-instance proceedings.

4.4.2 Resubmission of requests withdrawn at opposition stage

(CLB, III.I.5., V.A.4.11.3 f), V.A.4.12.13)

In T 52/15 the proprietor (appellant) filed a new "main request" every time the opposition division announced its opinion that the previous main request did not comply with the requirements of the EPC. Since the opposition division was of the opinion that the last main request did not comply with Art. 56 EPC, it revoked the patent. The appealed decision dealt only with this last main request. The proprietor requested that the decision be set aside and that the patent be maintained as granted or, alternatively, on the basis of one of auxiliary requests 1 to 4, which differed substantially from the request which was decided upon in the appealed decision. The proprietor argued that the previously filed main requests had not been withdrawn. Each new request was meant to supersede the previous one for the purpose of discussion only, but not to replace it. The board noted that the opposition division did not err when considering that each newly filed "main request" was clearly meant to replace the previously filed one/s. The board emphasised that the withdrawal of a request was a serious procedural step which was usually announced explicitly by a party via a corresponding statement and that any such statement must be mentioned in the minutes (see T 361/08). However, an explicit withdrawal was not required if a party's behaviour or procedural steps it took during the proceedings made its intention unequivocal (see T 388/12). The board also highlighted the fact that, according to established EPO practice, parties filing more than one request must specify which request is the main request, which is/are the auxiliary request(s), and, if there are several auxiliary requests, their ranking (see e.g. R 14/10).

The board concluded that the written decision of the opposition division was based on the only request that was pending when the decision to revoke the patent was orally announced. The main request and auxiliary requests 1 and 2 were filed with the statement setting out the grounds of appeal and corresponded to the proprietor's initial request and two auxiliary requests filed during the oral proceedings before the opposition division. These requests differed substantially from the request which was decided upon in the appealed decision. The board stated that the reintroduction of previously withdrawn requests on appeal ran counter to the main purpose of inter partes appeal proceedings, namely to give the losing party the possibility of challenging the decision of the opposition division on its merits. The board also noted that although there have been decisions where the boards have allowed patent proprietors to reinstate broader requests which had been withdrawn or not maintained during the opposition proceedings, numerous decisions have also been issued in which the board's discretion has been applied in a strict manner and such requests have not been admitted into the appeal proceedings (see T 390/07, T 361/08, T 671/08, T 922/08, T 1525/10, T 140/12, T 1697/12, T 143/14). This appeared to be the current predominant approach applied by the boards. The requests were not admitted into the appeal proceedings (Art. 12(4) RPBA 2007).

In T 1695/14 the auxiliary request in question, which the patent proprietor had filed during the oral proceedings, was the same as one of the auxiliary requests it had filed with its grounds of appeal. But the proprietor had not then pursued that original auxiliary request in the written proceedings, instead filing new auxiliary requests with a written submission stating that it wanted them to replace its previous ones. The board interpreted this statement as an implicit withdrawal of the auxiliary request; requests could be withdrawn either explicitly or implicitly, the latter being when the circumstances left no doubt that a party no longer wished to pursue them (see T 388/12, T 52/15). Requests not later pursued as the main or an auxiliary request, but (implicitly) withdrawn, did not remain in the proceedings; procedural law provided for current and withdrawn requests, but not for ones on hold.

The board then considered the relevant criteria for admitting a resubmitted request. Since a withdrawn request no longer formed part of the proceedings (see T 1732/10, T 143/14), its admission on resubmission later in them was subject to the same procedural standards as applied to an entirely new one (see T 1732/10, T 122/10); this was the boards' settled case law. Hence a request initially filed on appeal but implicitly or explicitly withdrawn later on in the proceedings had to be considered a new request when subsequently refiled. Its admission was then governed in particular by Art. 13 RPBA 2007 and the criteria for exercising discretion under it developed by the case law.

4.5 Converging or diverging versions of claims

(CLB, V.A.4.12.4)

In T 1280/14 the respondent (patent proprietor) did not make clear until the oral hearing that it now still intended to pursue only its third and sixth lines of defence. It had refiled with its reply 15 auxiliary requests that the opposition division had not examined because it had granted the main request. Although the board had already found fault in its preliminary opinion with the various alternative lines of defence formed by these requests, the respondent did not reveal until the oral proceedings that it from then on intended to pursue only two of them. Holding that the respondent should have communicated this change to its requests in due time, i.e. no later than one month before the oral proceedings, and that its conduct had therefore been at odds with the need for procedural economy, the board refused to admit its two remaining auxiliary requests and revoked the patent.

5. Reimbursement of appeal fees

5.1 Appeal deemed not to have been filed or inadmissible appeal

(CLB, V.A.9.3.)

In G 1/18 (OJ EPO 2020, A26) the Enlarged Board first considered that the question referred should be read as follows: "If notice of appeal is filed and/or the appeal fee is paid after expiry of the two-month time limit under Art. 108 EPC, is the appeal inadmissible or is it deemed not to have been filed, and must the appeal fee be reimbursed?"

The President of the EPO wrote that the requirements of Art. 112(1)(b) EPC had been met. As evidence of different decisions, the referral cited T 1897/17 as representing the "minority" view in the case law that the appeal is inadmissible and T 1325/15 and T 2406/16 as representing the "majority" view in the case law that the appeal is deemed not to have been filed. The President of the EPO added that the answer "is certain to have an impact on the practice of the Office's departments of first instance", several EPC provisions having similar wording.

The Enlarged Board held that there were three possible scenarios:

- Scenario 1: the appeal was filed within the prescribed two-month time limit AND the appeal fee was paid AFTER expiry of that two-month time limit.

- Scenario 2: the appeal was filed AFTER expiry of the two-month time limit AND the appeal fee was paid AFTER expiry of that two-month time limit.

- Scenario 3: the appeal fee was paid within the prescribed two-month time limit AND the appeal was filed AFTER expiry of that two-month time limit.

The Enlarged Board examined many decisions which constituted the so-called "majority" view in the case law in all three scenarios. Concerning the "minority" view in the case law, the boards had held in only 15 decisions that the appeal had to be rejected as inadmissible. The Enlarged Board had reached that conclusion in only one decision (R 2/10).

The Enlarged Board held that the EPC had to be interpreted in accordance with the rules laid down in the Vienna Convention concluded in 1969 (see in particular Art. 31 and 32). The consequence "the appeal is deemed withdrawn" has certainly not been laid down expressly in Art. 108 EPC. However, an analysis of the travaux préparatoires relating to R. 69 EPC 1973 (now R. 112(1) EPC) shows that the legislator did intend to stipulate there expressly the legal consequence that notice of appeal is deemed not to have been filed in that it grouped together in that single, generally worded provision all legal situations involving a loss of rights.

The Enlarged Board of Appeal concluded that, whatever the scenario at issue, the "majority" view in the boards' case law was applicable and the "minority" view was no longer to be applied. The point of law referred to the Enlarged Board of Appeal by the EPO President was answered as follows:

1. An appeal is deemed not to have been filed in the following cases:

(a) where notice of appeal was filed within the two-month time limit prescribed in Art. 108, first sentence, EPC AND the appeal fee was paid after expiry of that two-month time limit;

(b) where notice of appeal was filed after expiry of the two-month time limit prescribed in Art. 108, first sentence, EPC AND the appeal fee was paid after expiry of that two-month time limit;

(c) where the appeal fee was paid within the two-month time limit prescribed in Art. 108, first sentence, EPC for filing notice of appeal AND notice of appeal was filed after expiry of that two-month time limit.

2. In the cases referred to in answers 1(a) to (c), reimbursement of the appeal fee is to be ordered ex officio.

3. Where the appeal fee was paid within or after the two-month time limit prescribed in Art. 108, first sentence, EPC for filing notice of appeal AND no notice of appeal was filed at all, the appeal fee is to be reimbursed.

5.2 Violation must be of a procedural nature

(CLB, V.A.9.5.1, V.A.9.8.2, IV.B.3.9.)

In T 683/14 the examining division had implemented its erroneous position that the confidentiality document submitted on 1 August 2013 could not be taken into account because the debate had been closed and a "decision" had been taken during the oral proceedings of 10 December 2012. The board stated that the examining division had erred in two respects. Firstly, the oral proceedings were not terminated by a formal decision. Secondly, even if the debate had been formally closed, it could have been reopened. The board cited T 595/90: "Observations submitted [after the closing of the debate] could only be taken into account if the Board reopened the debate (Art. 113 EPC) which depends on its discretion." The board was of the view that analogous considerations applied to the EPO departments of first instance. The board found that the examining division did commit an error, but a substantive and not an (independent) procedural one. The procedural consequences were caused exclusively by the implementation of the division's erroneous substantive position. After the applicant filed an appeal against the decision to refuse the European patent, the examining division rectified their decision to refuse. The request for reimbursement of the appeal fee at 50% under R. 103(2) EPC was refused on the grounds that by rectifying the decision the examining division had set the decision under appeal aside and had allowed the appeal. As such the applicant's request for the withdrawal of its appeal had no object and in the absence of a pending appeal that might be withdrawn, R. 103(2) EPC did not apply.

5.3 Error of judgement by a department of first instance

(CLB, V.A.9.5.10 b))

In T 658/12 the board held that an insufficiently reasoned decision had to be distinguished from a decision that had faulty or unpersuasive reasoning. The board concluded that while the COMVIK approach may have been incorrectly applied in the case in hand, this was a substantive issue, only involving judgement. Thus, the board found that the decision was reasoned in the sense of R. 111(2) EPC. The board also found that the examining division had not acted unreasonably, as claimed by the appellant (applicant), by not admitting the second auxiliary request. The board held, therefore, that there was no basis for reimbursement of the appeal fee (see also T 690/06).

5.4 Excessive length of proceedings

(CLB, V.A.9.5.11 a)(ii))

In T 2340/13 the length of time between the oral proceedings and issuing of the minutes and written decision of the opposition division was 13 months and 14.5 months respectively. The board noted, with reference to T 358/10, that even if this delay by itself were not considered to be a substantial procedural violation, it plausibly contributed to the other procedural violations.

In T 2707/16 the contested refusal decision was taken more than fourteen years after the filing date. The board found that the excessive delays, in particular the lapse of more than seven years before the second substantive communication was sent out, constituted a procedural violation. The board argued that the violation was also substantial because the severe delays had the consequence that the first-instance decision was taken much later than it would have been without the procedural deficiencies. Thus, they had an impact on an essential element of the decision, namely its date ("justice delayed is justice denied"). However, the board was of the opinion that a reimbursement of the appeal fee in the circumstances should be regarded as equitable only where the applicant has made clear by some action that he did not tacitly agree with the stagnation of the proceedings. The board found the appellant failed to provide any such signal for a very long period of time and therefore refused the request for reimbursement.

In T 2377/17 the board found the delay of 14 years before the examining division issued its first substantive communication to be a substantial procedural violation. The board noted that the appellant had remained inactive for over 12 years before it requested accelerated examination, but the examining division then still did not succeed in issuing a communication within the period of six months to which it had committed; instead, it required close to two more years. After the appellant filed a timely reply, it again took more than 18 months – and a second request for accelerated examination, again leading the examining division to commit itself to a date it ultimately did not keep – before the examining division issued the summons to oral proceedings. Contrasting the applicant's attempts to move the case forward with those of the applicant in T 2707/16, in which the same board found the reimbursement of the appeal fee not to be equitable because the applicant there had taken insufficient action to try to move the proceedings forward, and noting the periods of unjustified delay that occurred despite the appellant's attempts to move the case forward, the board considered reimbursement of the appeal fee to be equitable in the case in hand.

In T 2699/17 the board agreed with the appellant (applicant) that a total processing time of more than 12 years (from filing of the application to the decision to refuse the application) was by far above the average, but found that although undesirably long, the duration of the case did not amount to a substantial procedural violation, taking into account the particular circumstances of the case. The reasonableness of the length of the proceedings must be assessed in each case but unlike in T 2707/16, in which there was a long period of stagnation, in the case in hand the examining division regularly returned to the case and addressed various issues of substance, which the appellant promptly addressed. During prosecution of the case, the decision in G 1/07 (OJ EPO 2011, 134) was also issued, which was highly pertinent to the application. The board was also unable to see why the appellant waited until the appeal stage to voice its concerns instead of making use of the PACE programme, which gives applicants a convenient tool to speed up the pace at which the proceedings are progressing (see also Chapter I.A.3.1. "Medical methods").

5.5 Violation of the principle of the protection of legitimate expectations

(CLB, V.A.9.7.3)

In T 613/14 the appellant (patent proprietor) withdrew its appeal but maintained its request for reimbursement of the appeal fee on the ground that it had filed the appeal based on misleading information provided by the opposition division, thus invoking the principle of protection of legitimate expectations. The issue to be decided was whether the statement by the opposition division that the rejection of the appellant's request to correct the decision to revoke European patent EP 1 730 151 and the minutes of the oral proceedings before the opposition division on 19 September 2013 constituted a decision open to appeal created a legitimate expectation that an appeal would be found admissible and examined as to its substance.

In contrast to a request for correction of the minutes or the decision to grant, the board stated that there was no established case law on the issue of whether or not the rejection of a request for correction of a decision under R. 140 EPC was open to appeal. It found therefore that it could not be ruled out, and that it was even likely, that the appellant had relied on the opposition division's statement when filing the appeal. The board considered the opposition division's statement to have created a legitimate expectation that an appeal would be found admissible and examined as to its substance, at least in respect of the request for correction of the decision. However, in its preliminary opinion, the board took the position that the appeal against the opposition division's refusal of the request to correct its decision was not admissible. The board held that it had thus deprived the appellant of its legitimate expectations. After the board had maintained its preliminary opinion during the oral proceedings, the appellant withdrew its appeal. Under these circumstances, the board considered it justified to order the reimbursement of the appeal fee.

5.6 Withdrawal of appeal under Rule 103(2) EPC

(CLB, V.A.9.8.2)

In T 265/14 the appeal had been withdrawn after expiry of the period set by the board in a first communication inviting the party to file observations under R. 100(2) EPC but before expiry of the period set in a second communication. The board held that R. 103(2)(b) EPC was not to be interpreted as definitively ruling out reimbursement of 50% of the appeal fee where no observations were filed within the period set under R. 100(2) EPC. If a board then set a new period for filing observations, it thereby gave the appellant a fresh opportunity to withdraw the appeal, with the effect of reducing the fee, within that period. So the board concluded that issuing a second invitation under R. 100(2) EPC was to be treated as equivalent to setting a date for oral proceedings after expiry of the period set in the first invitation, which likewise reopened the possibility of the reimbursement of the appeal fee under R. 103(2)(a) EPC. That reimbursement was possible in those circumstances supported the view that R. 103(2) EPC as a whole was to be interpreted broadly in the light of its object and purpose and that both its scenarios could be treated in the same way.

B. Proceedings before the Enlarged Board of Appeal

1. Article 112a(1) EPC – adversely affected party entitled to file a petition for review

(CLB, V.B.3.3.)

In R 4/18 the Enlarged Board held that minutes were not considered to be a decision. It did not see how the use of the word "conclusion" instead of "preliminary view" in the context of the minutes of oral proceedings could transform those minutes into a decision, noting that the appeal proceedings had been terminated by the appellant's (petitioner in the case in hand) withdrawal of the appeal in the proceedings under review. The Enlarged Board noted that it was the common practice of the boards to express views or conclusions on the substantive issues before them during the course of the oral proceedings. A decision on the case is then made at the end of the oral proceedings.

2. Time limit for filing a petition for review

(CLB, V.B.3.8., III.E.4.1.)

In R 1/18 the Enlarged Board was called on to decide whether a petition for review for which the fee had not been paid in time was to be regarded as inadmissible or deemed not to have been filed. The same question arose in relation to a request for re-establishment of rights. The Enlarged Board saw no reason not to apply the findings reached in opinion G 1/18 (OJ EPO 2020, A26) to the provisions governing the legal effects of late payment of the fee for petition for review and so concluded that the petition for review had to be deemed not filed and that the associated fee had to be reimbursed. On requests for re-establishment of rights generally, it observed that, while R. 136(1), last sentence, EPC was worded in the same way as Art. 108, second sentence, EPC, which had been examined in opinion G 1/18, R. 136(1) EPC also provided that the period for filing a request for re-establishment of rights generally began to run from the removal of the cause of non-compliance, which meant that period could not always be determined without thoroughly investigating the circumstances of the case (the findings in G 1/18, in particular those in point IV.3 of the Reasons, were thus not directly applicable – the notion of examining the merits of a non-existent request, albeit merely as a legal fiction, was in itself contradictory). Turning specifically to R. 136(1), second sentence, EPC, however, the Enlarged Board observed that it laid down different rules for re-establishment of rights in respect of the period for filing a petition for review under Art. 112a EPC. In the case in hand, therefore, a purely formal examination of the request for re-establishment of rights was sufficient and there was no need to examine its merits. The Enlarged Board thus concluded that the proper legal effect of late payment of the fee for requesting re-establishment of rights was a finding that the request was deemed not to have been filed and that the fee was to be reimbursed (see also T 46/07, point 1.3.2 of the Reasons). The Enlarged Board was competent to decide in its restricted composition pursuant to R. 109(2)(a) EPC that the request for re-establishment of rights and the petition for review had to be deemed not filed. It ordered reimbursement of the associated fees.

3. No opportunity to comment, surprising reasons

(CLB, V.B.4.3.8 a), III.B.2.5.1)

In R 6/18 the petitioner (patent proprietor) complained that the board's finding of added subject-matter with respect to the second auxiliary request in the decision under review was made in violation of its right to be heard. It claimed the decision was based on non-discussed passages of the description that had never been relied on before by the opponents or the board. The Enlarged Board found that it could not come as a surprise that the board, when deciding whether there was an unambiguous disclosure of the claimed invention, did not only consider the passage sensu stricto referred to by the petitioner but also the sentences which directly followed that passage. Parties had to be aware that in general the question of added matter could not be decided by simply relying on isolated passages of the description but required a comprehensive analysis of the application documents.

4. Article 112a(2)(a) EPC – alleged breach of Article 24 EPC

(CLB, V.B.4.3.15, V.B.4.1., III.J.5.2.5)

In the decision under review in R 3/16, the petitioner argued that once an objection based on Art. 24(3) EPC had been raised, the member(s) objected to could not take part in the decision whatsoever, be it on the admissibility or on the merits of the objection. The Enlarged Board noted that Art. 112a(2)(a) EPC foresaw the situation where a member of the board had taken part in the decision despite being excluded pursuant to a decision under Art. 24(4) EPC or in breach of Art. 24(1) EPC. The case in hand was not concerned with those two grounds since the members had not been excluded and no personal interest had been alleged. Therefore, by a mere application of the principles developed by the established case law of the Enlarged Board under Art. 112a EPC, the Enlarged Board held that if the alleged unlawfulness of the composition was not the consequence of a violation of the right to be heard or an omission of a request, this ground (an objection based on Art. 24(3) EPC) appeared to fall outside the scope of a review, since inter alia it was not on the list of grounds under Art. 112a EPC. The petitioner had further contended that it was an established principle that a party had no obligation to appear before an unlawful court; that, on the contrary, it could be prejudicial to do so since the right to be heard could not be properly guaranteed before such a court, thus leading to the question as to whether appeal proceedings held by a board unlawfully composed may amount per se to a breach of the right to be heard. This question, however, remained open because the Enlarged Board did not come to the conclusion that the board had actually ignored the procedure of Art. 24(4) EPC. Regarding the petitioner's misunderstanding of the first communication, the Enlarged Board held that the petitioner was itself responsible for not having attended the oral proceedings where the alleged ambiguity of a communication could have been dispelled. A petitioner is free not to attend the oral proceedings but this choice is at its own risk since a board is never obliged to postpone oral proceedings only because a party does not appear, provided that it bases its decision on the facts and arguments on file (R. 115 EPC and Art. 15(3) RPBA 2007).

5. Article 112a(2)(c) EPC – alleged fundamental violation of Article 113 EPC

(CLB, V.B.4.3.2, V.B.4.3.17, III.B.3.1.)

In R 8/16 the Enlarged Board held that an alleged violation could not be fundamental, in the sense of intolerable, if it did not cause an adverse effect. In the case in hand the Enlarged Board stated that the omission of the reasons for the admission of the main request may not be a practice which it expressly endorsed but given that the petitioner did not explain and the Enlarged Board itself could not see what adverse effect might have been caused by not hearing the petitioner on this issue, and given that the admission of the petitioner's main request was clearly a positive result for the petitioner, it was not seen as a fundamental violation of Art. 113(1) EPC. The Enlarged Board further held that, as a matter of principle, the board was free to examine the (pending) claim requests in any order, and therefore it was also free to conduct the discussion on them in any order, without having to give reasons. It stated that the principle of party disposition expressed in Art. 113(2) EPC did not extend so as to permit a party to dictate how and in which order a deciding body of the EPO may examine the subject-matter before it. The only obligation on the EPO was not to overlook any still pending request in the final decision. The order of examination or discussion is a question of procedural economy, for which mainly the deciding body is responsible. A board has no particular duty to give reasons why it chose to proceed as it did. Giving reasons on withdrawn requests might well have given rise to an objection under Art. 113(2) EPC.

6. No right to a further hearing at first instance

(CLB, V.B.4.3.13)

In R 7/16 the board of appeal found that the decision of the opposition division presented a fundamental deficiency, but decided not to remit the case to the opposition division, exercising its discretion under Art. 11 RPBA 2007. The petition was based upon an alleged insufficiency of reasoning in the written decision. The Enlarged Board commented that a detailed discussion of the substantive issues before a decision on the remittal would have rendered any remittal pointless since the first instance would have been bound by the considerations of the board of appeal or could have expected that its decision would be reversed if it was not in line with the considerations of the board of appeal. The refusal of a remittal cannot per se be a ground for allowing a petition.

7. Successful petitions under Article 112a(2)(c) EPC

(CLB, V.B.4.3.19)

In R 4/17 the petitioner argued that it had no record of ever having received the notice of appeal or statement of grounds for appeal and that it had no knowledge of the existence of the appeal until it received the decision in the appeal case. The Office was not able to establish that the critical communications had reached their destination, as required under R. 126(2) EPC. The Enlarged Board held that parties must be able to rely on the EPO complying with the relevant provisions of the EPC and, at least for the purposes of Art. 113(1) EPC, they and their representatives have no duty to monitor the proceedings themselves by regularly inspecting the electronic file. It cannot be expected that the respondent should prove a negative, i.e. the non-receipt of a letter, or provide a plausible explanation for non-receipt.