The patent relates to a fluidized bed heat exchanger.
Brief outline of the procedure
The proprietor appealed the revocation of the patent.
The patent was revoked for lack of N over, E1=US 5 218 931 and E7=US 5,325,823, both not mentioned in the ESR. The ESR mentioned 4X and 1A document.
The decision of the OD was taken in writing and AR were filed after the decision was handed over to the EPO postal service by the OD, and could thus not be taken into account.
The board confirmed the lack of N over E1 and the not admissibility of the AR.
The revocation was thus confirmed.
The case is interesting in that the proprietor alleged a substantial procedural violation and requested that the AR be be admitted in appeal.
The proprietor’s point of view
For the proprietor, the OD had not met its obligation to communicate its preliminary opinion and to invite the parties to file their observations pursuant to Art 101(1), second sentence, before issuing its decision.
Moreover, the decision under appeal did not take into account the appellant’s submissions and auxiliary requests filed on 11.03.2020.
The board’s point of view
The revocation without issuing a communication
In its reply to the notice of opposition received on 04.11.2019, the proprietor had not requested OP or filed any auxiliary requests. On 11.03.2020, the proprietor filed a further submission together with six AR.
For the board, and contrary to the proprietor’s assertion, Art 101(1), second sentence, does not require the OD to send a communication with a preliminary opinion before giving its decision.
In addition, not issuing at least one communication under Art 101(1) cannot in itself substantiate an assertion of an infringement of the right to be heard, see Case Law of the Boards of Appeal of the EPO, 10th edition, 2022, IV.C.6.2.
The OD based its decision on the grounds and evidence set out in the notice of opposition, i.e. on grounds and evidence on which the proprietor had already had an opportunity to present its comments. Hence, the requirements of Article 113(1) EPC are fulfilled.
As the proprietor had not requested OP as per Art 116(1), the proceedings could be concluded with the decision to revoke the patent in written proceedings. Hence, there was also no need to issue a summons accompanied by a preliminary opinion and fixing a final date for making written submissions according to R 116(1).
The non-admissibility of the AR
The date of 17.12.2020 of the decision to revoke the patent corresponds to the date of despatch of the decision. However, pursuant to decision G 12/91, see the order and point 1 of the Reasons, the relevant date on which the decision-making process is completed and after which it is no longer possible to take account of further party submissions is the date on which the decision is handed over to the EPO postal service by the decision-taking department’s formalities section.
In the case in hand, the decision under appeal had been handed over to the EPO postal service on 10.03.2020 as indicated on sheet 2 of Form 2331.
Hence, the AR and letter filed one day later, on 11.03.2020, arrived when the decision-making process had already been completed and the proceedings before the opposition division terminated. Therefore, these submissions, including the statement at the beginning of the letter that a preliminary opinion of the opposition division was expected, could not be taken into account in the decision under appeal. In fact, the OD was not even competent to do so any more.
Accordingly, the fact that the AR and the reply filed on 11.03.2020 were not taken into account in the decision under appeal and that no reasons are given for disregarding them is procedurally correct and does not violate the right to be heard.
As the AR were not admitted in the opposition procedure, the board did not admit them in appeal under Art 12(4) and (6) RPBA20/21.
The present case is interesting as two, rather infrequent, events occurred. The proprietor
- did not request OP and did not file any AR in reply to the opposition.
- did file a further submission and AR after the moment at which the decision had been handed over to the internal postal service of the EPO.
In view of the opposition procedure before the EPO, not requesting OP in reply to an opposition and not filing any AR can be very daring.
When looking at the chronology of facts, the OD had waited 4 months in order to issue a decision in writing. The reply to the opposition was filed on 04.11.2019 and the decision of the OD was sent to the internal postal service on 10.03.2020.
Two lessons can be drawn:
– always request OP and file AR in reply to an opposition.
– do not wait the “virtual” 4 months’ time limit to file a further reply in the absence of a request for OP.
On the procedure
The patent should never have been granted as E1 and the patent were to be found in the same classification units IPC F22B 31/00 and CPC F22B31/0084. The same applies to E7.
Those documents were thus present in the search files consulted during the ES F 23C and F 22B.
The 4X in the ESR most probably led the search examiner to stop the search.
It is in about 9% of the oppositions that a patent is revoked or maintained in amended form on the basis of documents which could genuinely not be present the search files. Public prior use, oral disclosures and PhD dissertations are examples of such documents.