EP 2 869 436 B1 relates to “Vibration damage repair in dynamoelectric machines”.
Brief outline of the case
No reply to the opposition was received from the proprietor.
The OD issued a direct decision refusing (sic!) the patent in writing without prior communication of its preliminary opinion less than two months after the time limit to file observations set according to R 79(1) had expired.
The patent was revoked and the proprietor appealed the revocation.
The proprietor did also not receive a copy of the decision of revocation under the then valid regulation.
The question also arose as to whether the appeal was at all admissible.
The proprietor’s point of view
The proprietor submitted that they had never received the OD’s decision and that they had become aware of it and more generally of the opposition proceedings only by an email of an employee of the EPO, PA admemp patent FO Team Central Formalities MU, Dir 1.2.5.1 dated 26,06.2020, 6 pm.
The proprietor brought forward that they received neither the communication pursuant to Arti 133 and 134 inviting them to give notice of the appointment of a professional representative, nor the communication informing them about the notice of opposition.
The opponent’s point of view
The opponent objected to the admissibility of the appeal for the reason that, since the proprietor did not present any request in the first instance proceedings, they are not negatively affected by the OD’s decision.
The opponent essentially argued that it was not plausible that the proprietor had not been aware of the fact that the previous representative had withdrawn its representation.
They contend that the withdrawal of representation by the former representative concerned plural files of the proprietor for some of which the appellant had appointed new representatives and for some not.
Since the withdrawal was also present in the files for which new representatives were appointed the proprietor must have been aware of the fact that the former representative had withdrawn its representation.
They also argued that the appellant had to be aware of the withdrawal of representation because it was its own subsidiary that had withdrawn the representation for the plurality of files.
Admissibility of the appeal
The decision of the OD is dated 06.04.2020 and following the legal fiction set by R 126(2) was deemed to be notified to the parties on the tenth day following its handover to the postal service provider, i.e. on 16.04.2020.
In the present case such confirmation of receipt for the decision of the OD was available in the file from the then opponent only, but not from the then proprietor.
Since the EPO could not prove whether the registered letter reached the appellant, as required by R 126(2), it must be accepted that the legal fiction of deemed notification did not apply and the proprietor became aware of the appealed decision for the first time with the email on 26,06.2020. This date is therefore the date of notification of the decision.
The board disagreed with the opponent. The lack of participation of the then proprietor to the opposition proceedings, particularly the fact that they were prevented from filing any submission and requests during the opposition proceedings as they became aware of those proceedings for the first time when they discovered that a decision had already been issued, is actually the main reason for the present appeal.
Notice of appeal was filed on 30.06.2020, together with the payment of the appeal fee. A statement of grounds of appeal was filed on 28.08.2020. The appeal was received within the appeal period and is therefore to this extent admissible.
The SPV
For the board, there are two distinct issues related to the submitted violation of the right to be heard:
- the first concerning the invitation to appoint a professional representative under Art 133(2) and 134 and
- the second, and most important one, concerning the notification of the notice of opposition.
The board considered it essential that a party is informed that opposition proceedings against their patent have been initiated.
For the board, the opponent’s conclusion that compliance with the Notice of the EPO relating to R 126(1), rules out the possibility of a violation of the right to be heard has no factual basis.
The provisions of R 126(2) in force at the relevant time define a rebuttable fiction of notification, which, in case of dispute, has to be verified. It therefore does not represent a conclusive definition of “when” a document is actually notified.
The opponent’s argument, that the burden of proof regarding notification was on the proprietor’s side thus has no legal basis in the EPC. For the board, the filing of cogent evidence showing that a letter was not received is hardly ever possible, cf. J 9/05, Reasons 3.
In the present case the proprietor when filing the appeal has immediately disputed having received inter alia the communication of the notice of opposition and the communication under R 79(1).
In addition, the board took the view that under the present circumstances legal certainty and the protection of the right to be heard in relation to the initiation of opposition proceedings, would have required that the OD established, by any available means, the fact and date of delivery of the communication of the notice of opposition also before a dispute was formally raised, when the proprietor was not yet in the position of raising a “dispute” on delivery.
In the case of opposition proceedings initiated against a patent, it is essential that the patent proprietor is duly notified of the initiating document, i.e. the notice of opposition, before a negative decision against the proprietor can be issued.
The proprietor may decide not to react to the notice of opposition. Nevertheless the communication under R 79(1) does not constitute a mere formality, rather it has the function of allowing the patent proprietor to both contribute to the opposition division’s appreciation of the facts and to defend its interests.
In the absence of proof that the communication under R 79(1) ever reached the proprietor, the OD committed a SPV by deciding revocation in the absence of any reaction of the proprietor.
Comments
It was usual in the past that in absence of a reaction from the proprietor, a reminder to the proprietor was sent before the OD began examining the opposition.
A lot seem to have gone wrong on the formalities side in the present case.
Not only the communication under R 79(1) never reached the proprietor, but the proprietor was informed by an e-mail that a decision of revocation had been issued.
Difficult to beat, but in a period in which everything has to be quick, the present mishaps do not come as a surprise.
One wonders what would have happened without the e-mail. Probably, the final communication confirming the absence of an appeal and the revocation of the patent would have shaken up the proprietor.
In R 7/09 and R 4/17, mentioned in the present decision, the petition for review was admissible and allowable as the notice of appeal and the grounds of appeal were never notified to respondent/proprietor. The EBA also held that there is no need for the proprietor to consult the register to see whether an appeal had and a statement of grounds of appeal had been filed at the EPO.
There must have been some special, unknown, reasons for the OD to decide as quickly as it did.
Comments
2 replies on “T 1529/20 – When one formality action goes wrong, another formality might go wrong as well”
I think the reasons may have to do with the covid lockdowns: the decision is dated 6 April 2020.
It seems that the decision was then sent by postal mail to the headquarters of the patent proprietor in the United States. But during that time, postal services were thoroughly disrupted: one letter I mailed to the EPO to register my changes of coordinates as a European patent attorney took more than a month to arrive, and other letters I had mailed were never delivered and were instead returned to me. Regardless of who had to prove what, it is quite plausible that the decision really never reached the patent proprietor.
Is it also covid that justifies taking nearly four years for this appeal? Is there no process at the Boards of Appeal to accelerate those cases that are bound to be remitted for SPV?
Noteworthy is that it only took one week to notify the opposition again and thereby resume opposition procedings.