EP 3 263 001 B1 relates to a removable point-of-care hygiene compliance module for a dispensing container
Brief outline of the case
The OD decided that claim 1 as granted infringed Art 123(2). The same applied to AR1-4.
The OD maintained the patent according to AR5. The opponent appealed.
The board held that AR5 also infringed Art 123(2) and the patent was revoked.
The opponent also argued that the OD committed a SPV and requested the reimbursement of the appeal fee.
This request was refused by the board, but the OD nevertheless committed a SPV.
The opponent’s point of view
The opponent requested twice the OD to correct its decision by addition of an allegedly missing reasoning, which the OD accepted as a correction under R 140.
The board’s decision
The board was of the opinion that even if there were omissions from the original decision, the decision was adequately reasoned and reflected the OD’s real intention and therefore did not amount to a violation of R 111(2).
The Board was, however, of the view that the two retrospective corrections of the decision inserting entire new paragraphs regarding added subject-matter in AR5 into the decision, could not be based on R 140 because the corrections carried out could not be qualified as obvious mistakes under R 140.
The board saw in this a substantial procedural violation (SPV).
In the present case, in order to achieve a revocation of the patent, the opponent would have had to file the appeal anyway – even without the two corrections in the decision. The board therefore did not see a causal link between the SPV and the filing of the appeal.
The opponent’s request for reimbursement of the appeal fee under R103(1,a) was therefore refused.
Comments
One wonder which training the OD underwent in order to find that amending its decision twice by adding entire paragraphs, was in accordance with R 140.
Once a decision has been issued, a first instance division is bound by its decision and cannot amend it on its own volition, or following a request from a party. Only a board has the competence to confirm, infirm or amend a decision of first instance. . This is basic knowledge.
According to R 140, only linguistic errors, errors of transcription and obvious mistakes may be corrected in decisions of the EPO.
G 1/10 related to the correction of the decision to grant, but applies mutatis mutandis to the present instance.
That a SPV was committed by the OD was thus more than manifest.
The present decision also confirms a long lasting line of case law that the reimbursement of the appeal fee is not equitable when the appealing party had anyway to appeal, even if the board could conclude that the first instance committed a SPV. .
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