CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1077/19 – Withdrawal or request for revocation – Substantial Procedural Violation

chat_bubble 0 comments access_time 4 minutes

The patent relates to providing a power-on reset (POR) of one or more controllers of an elevator without a maintenance person visiting the site of the elevator.

Brief outline of the case

The OD decided that claim 1 as granted was lacking N over to JP patent documents, whereby both were not mentioned in the ISR of the EPO.

The patent was maintained according to AR3 by the OD.

The proprietor and both opponents appealed the decision.

In its communication under Art 15(1) RPBA20 the board raised objections of N of claims 1 and 4 as granted over D 9 and D10, whereby both were not mentioned in the ISR of the EPO.

In reply to the communication, the proprietor withdrew all its requests on file and indicated that it disapproved any text for maintenance of the patent and that, accordingly, it requested that the patent be revoked.

Both opponents requested reimbursement of the appeal fee for reason of a substantial procedural violation.

The patent was revoked by the board.

The request for reimbursement of the appeal fee by opponent 1 was dismissed.

The request for reimbursement of the appeal fee by opponent 2 was granted.

The proprietor cannot request revocation of his patent

The board held that the proprietor cannot request revocation in the framework of opposition or opposition appeal proceedings, as it is expressly excluded by Art 105a(2).

At the same time, the board considered that the proceedings ought to be terminated as quickly as possible in the interests of legal certainty. The only possibility in such a case is for the Board to revoke the patent as envisaged, for other reasons, in Art 101.

The Board concluded that the patent must be revoked.

For the board, this conclusion was in line with case law developed by the boards of appeal in, inter alia, decisions T 73/84, T 186/84, T 655/01, T 1526/06 and T 1960/1.

The substantial procedural violation

Opponent II argued that the reasoning with respect to inventive step is rather short in the interlocutory decision of the OD. With regard to arguments starting from D05(O2) it was questioned whether the OD had even considered the correct document, not least due to its succinct dismissal as an appropriate starting document by stating “since so many features are missing in D5, it would be impossible for the person skilled in the art to modify the system of D5 …”. Alternatively, opponent II argued that its arguments had simply been ignored or incorrectly understood.

The Board noted that the minutes of the OP before the OD explicitly mentioned an inventive step objection having been discussed starting from D5(O2) in combination with D8(O2).

The OD’s decision, as also argued by opponent II, identifies the ‘inventive step attacks … brought forward by the opponents’, which ambiguously refers to ‘D5’ as a starting point rather than D5(O1) or D05(O2) which are two entirely different documents.  

Furthermore D8(01) is clearly identified among the inventive step attacks whereas D8(O2), again a completely different document to D8(O1), is plainly nowhere considered in regard to inventive step.

It is clear that, despite the OD having recorded the objection in the minutes even with a counter argument from the proprietor that one feature of claim 1 was not known from D5(O2), the attack and the OD’s reasoning on this have been completely omitted. It is thus impossible from the decision to understand why the attack was not successful.

In view of the subject-matter of claim 1 of the request before the OD being found to involve an inventive step and to meet the requirements of the EPC, in failing to address at least one of opponent II’s inventive step objections to this request the OD committed a substantial procedural violation.


Withdrawal or request for revocation

The proprietor might have used an unfortunate wording in his letter.

It is nevertheless clear that he withdrew all its requests on file and indicated that it disapproved any text for maintenance of the patent. In such a situation Art 113(2) applies and the patent is revoked.

This was for instance the case in T 51/21 where the board informed the parties that the withdrawal made it clear that the respondent no longer approved the text of the patent, which was equivalent to a request for revocation.

What was unfortunate was the fact that he “accordingly” he requested revocation.

All the decisions cited by the board to support the revocation, i.e. T 73/84, T 186/84, T 655/01, T 1526/06 and T 1960/12; cf. also T 237/86 and T 459/88, preceded the introduction of the limitation/revocation procedure in the EPC 2000.

The decision is correct, but can at the same time be considered as over formalistic as the proprietor made clear just before that he disapproved any text and withdrew any requests. The application of Art 113(2) would have been sufficient. This was for instance, done in T 1838/19.

Substantial procedural violation

The decision shows that even if the patent is revoked for another reason by the board, it does not dispense the OD to take into account all the objections raised by the opponents.

The mishap lies in the fact that the OD adopted a cumbersome way of defining the pieces of prior art by keeping the respective designations of the opponents, i.e. D5(O1) and D05(O2). That later in the decision, the OD ambiguously referred to ‘D5’ is thus no surprise.

In the past, often the proprietor used to draft a consolidated list of all the pieces of prior art. Nowadays this is done by the EPO. Confusion about prior art documents should thus not occur any longer.

This service of the EPO is very useful.


Art 113(2) / SPV

Share this post


Leave a comment

Leave a Reply

Your email address will not be published. Required fields are marked *