The patent relates to a simplified device of a camera unit of a motor vehicle.
Brief outline of the case
The OD has rejected the opposition and the opponent appealed the decision.
The opponent filed an appeal before notification of the written reasoned decision, but after delivery of the decision at the OP.
The proprietor considered that the appeal was not admissible, due firstly to the early filing of the notice of appeal and secondly the lack of substantiation as the arguments raised in opposition were merely repeated.
The statement of grounds of appeal was filed within four months of the signification of the decision
The board held the appeal admissible, be it for the early filing of the notice of appeal and for the substantiation.
As to the substance, the board held that the interpretation of a specific feature 5″ of claim 1 was too narrow and thus incorrect.
The board set aside the decision and remitted the file for further prosecution.
Admissibility of the appeal
According to Art 108, first sentence, notice of appeal has to be filed within two months of notification of the decision.
The opponent filed the notice of appeal before the two months mentioned in Art 108, first sentence.
In T 389/86, OJ EPO 1988, 87, the board held that an appeal filed after delivery of a decision at OP but before notification of the written reasoned decision abides by the time limit under Art 108, first sentence.
The proprietor’s position
The proprietor questioned the view expressed in T 389/86. In the proprietor’s view, if the early filing of the appeal were admissible, there would be at least a systemic possibility that the OD, for human reasons, would handle the grounds for the decision differently than it would have done without the certainty of a review of those grounds. It thus considered that the OD could be influenced by the pending appeal filed before signification of the decision.
Just as R 137(1) prohibits a search division from being disturbed by amendments to the patent application, Art 108, first sentence, should prevent any influence on the drafting of the grounds for the decision by the decision-making body.
The board’s position
For the board, the proprietor’s argumentation is based on an incorrect understanding of the requirements of the EPC and is therefore not convincing.
The EPC requires that the decision-making bodies of the EPO decide impartially on the parties’ requests
For BA members Art 24 applies. G 5/91, OJ EPO 1992, 617, applies for first instance deciding bodies. As long as the decisions are reasoned under R 111(2) the level of detail of the reasons for the decision is left to the decision-making bodies and therefore no party can complain.
The question whether the OD would have handled the grounds for decision differently than it would have done without the certainty of reviewing those grounds is therefore irrelevant.
The board further noted that the decision-making bodies have no control over the content of the parties’ submissions anyway. It cannot be prevented, for example, that a party already communicates in writing or at OP, before a decision is pronounced or notified, its intention to file an appeal if the outcome is negative for it.
No interpretation of the EPC could in this case prevent speculation as to whether the formulation of the grounds for the decision by the decision-making body was influenced by this communication. It must therefore also be accepted that no interpretation of Art 108, first sentence, can prevent similar speculation.
Contrary to the proprietor, the board cannot draw a parallel between R 137(1) and Art 108, first sentence. R 137(1) does not define a time limit within which a procedural step must be taken by a party, but a point in time before which an applicant may not in principle amend the description, claims or drawings of a European patent application.
Based on R 137(1), no statement can therefore be made on the correct interpretation of the wording “within two months after” of Art 108, first sentence.
It is clear that should a proprietor manage to have an appeal declared inadmissible, after a positive decision of the OD, the patent comes out of the whole procedure as fresh as granted.
The present decision makes clear that the notice of appeal can be filed once the final decision of the OD has been delivered during OP.
The two months’ time limit for filing the notice of appeal is therewith respected, and the step of the notification is not necessary to file the notice of appeal.
The other conditions, filing of the statement of grounds and appeal and substantiation remain.