CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1121/21 – Whether an opponent is taken by surprise by a decision on the non-admissibility of the opposition does not necessarily boil down to a substantial procedural violation

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Before discussing the decision of the admissibility of the opposition, it is worth looking at a potential conflict of interests.

A potential conflict of interests

By letter dated one day before the scheduled first OP, the proprietor complained for not having been informed that the opponent had appointed “Godemeyer Blum Lenze Patentanwälte Partnerschaft mbB” as representative.

A conflict of interest existed in violation of Article 3(2) of the Regulation on discipline for professional representatives, since all professionals of that association had represented the proprietor in examination proceedings. Oral proceedings had to be postponed in order to allow the parties to solve this conflict.

At the first OP, the OD decided to adjourn the OP, with the agreement of the parties, and reconvene later.

At the second OP, the proprietor was represented by the same firm which represented the proprietor during examination.

Brief outline of the case

Roughly one month before the second OP, the proprietor raised for the first time the objection that the person of the opponent could not be unequivocally identified within the nine month opposition period and considered the opposition as not being admissible.

Shortly before the second OP, the opponent provided arguments in support of admissibility of the opposition and requested that this objection should not be admitted as being late.

During the second OP, after discussions between the parties and the OD, the latter decided that the opposition was not admissible.

The opponent appealed the decision of the OD according to which the opposition was not admissible

The board held that there was no doubt about the identity of the opponent and hence the opposition was admissible. The board remitted the case to the OD for further prosecution.

The opponent considered that the OD committed a substantial procedural violation (SPV) and requested the reimbursement of the appeal fee.

The board decided that the OD did not commit a SPV and refused the request for refund of the appeal fee.

The opponent’s position on the SPV

For the opponent, the OD committed a SPV as the decision on the inadmissibility of the opposition came as a surprise. For this reason the appeal fee had to be reimbursed.

The opponent had thus expected first a decision on the admittance of the late filed objection of inadmissibility of the opposition and then a discussion on the substance of the objection.

This sequence was reflected also in points 1. and 2. of the minutes of the OP. The decision that the opposition was inadmissible was announced immediately after the first interruption of the OP for deliberation of the opposition division, thus leaving no possibility for the appellant to present their submissions as to the substance of the admissibility of the opposition.

The board’s position

The board considered first that the question of admissibility of an opposition can be assessed at any stage of the proceedings. For instance in T 522/94, OJ 1998, 421, the board held that a “board of appeal may and, where appropriate, must verify the admissibility of the opposition in the appeal proceedings, even if this issue is raised for the first time at this stage”.

For the board, the fundamental principle of the right to be heard enshrined in Art 113(1), to the extent that it encompasses also the protection of good faith and the right to a fair hearing, is violated if at the time when the decision is issued a party had no reasons to expect such a decision and no possibility to provide their arguments.

The board reminded that the minutes of the OP, together with the appealed decision, represent for a board the only possibility to understand what objectively happened during the OP before a department of first instance, for the simple fact that a board is not present at such oral proceedings.

For the board, subjective expectations or surprises as to the developments of proceedings cannot be taken into account, if they are not backed up by concrete details. In the absence of evidence to the contrary thus the board has to rely on the assumption that the minutes of the OP correctly reflect the actual course of the oral proceedings.

In the board’s view it cannot be said that in the present case the parties, in particular the then opponent, were not given the possibility to provide their arguments as to admissibility of the opposition, nor that they objectively had no reasons to expect a decision of the opposition division on this point at that stage of the oral proceedings.

For the board, there is no indication in the minutes that the then opponent was surprised after the OD took the decision on the inadmissibility of the opposition, nor that they expected only a decision on the admissibility of the corresponding objection. The opponent has also never indicated which further arguments it would have intended to submit in relation to the admissibility.

The OD had thus not committed a SPV.


On the potential conflict of interests

It is surprising that in the firm of representatives that the fact that the firm had represented the proprietor in examination was left undetected, when the opponent gave a mandate for representation for an opposition against this proprietor.

On the SPV

It is not the first time that a board reminds the parties that without proof of the contrary it can only but accept that the minutes of the OP are a true representation of what happened during the OP. It happens regularly that without even a request for correction of the minutes a

It is established case law that a party cannot claim to have been taken by surprise when the topic has been thoroughly discussed between the parties and the deciding body.

The opponent might have considered that his arguments were in favour of admissibility and only his request not to admit the objection has been discussed, but his point of view is irrelevant in the matter. The decision has been set aside, but at the time, the OD decided that it was not admissible.

A decision that an opposition is not admissible is always interesting for an OD, as then the opposition does not have to be discussed in substance

This also applies when a petition for review is filed. In R 5/22, the EBA held that if the petition was not clearly inadmissible, it was not well founded as the EBA concluded: “It follows from the above that no violation of the Petitioner’s right to be heard can be established regarding its allegations of surprise reasoning in the written decision”.

In R 2/08, the EBA held that after having been heard on the non-admissibility of a new ground of opposition raised for the first time in appeal, and this new ground considered not admissible, the right to be heard of the opponent during the appeal procedure was not violated. This applies mutatis to the present situation of the admissibility of the opposition.

If the OD had first discussed the substance of the opposition and decided at the end of the OP on the admissibility of the opposition, then it would most probably have committed a SPV as a decision on the admissibility of the opposition necessarily precedes a decision on the merits.


Art 113(1) / SPV

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