CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1998/21 – Anything you say during OP might be taken against you – Duty of clarification of the status of AR

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The patent relates to pharmaceutical Anti-TNF-Alfa antibody formulation.

Brief outline of the case

Following two oppositions and one intervention, the patent was revoked. The proprietor appealed.

During the OP before the board, Opponents 1-3 withdrew their oppositions. A new MR was admitted during OP pursuant to Art 13(2) RPBA,

Eventually the decision of the OD was set aside and the case remitted for further prosecution as the OD had committed a SPV with respect to the AR, but not when dealing with the MR.

In the absence of a causal link between the SPV and the decision that necessitated the filing of an appeal, the appeal fee was not reimbursed.  

The proprietor’s view

For the proprietor, the appeal fee should be reimbursed pursuant to R 103(1,a) due to SPVs committed by the OD. The right to be heard had been violated by the OD because

  • the opposition division had not given the proprietor an opportunity to present submissions on the allowability of the AR at the OP and
  •  no reasoning was provided in the OD’s decision regarding the alleged non-allowability of the AR.

Each of those circumstances amounted to a SPV

.The board’s point of view

The proprietor had an opportunity to present its arguments on the AR

The board noted first, that the proprietor did not request a correction of the minutes of the OP before the OD, thus, it must be assumed that the minutes properly reflect the course of events during the OP.

According to the minutes, the AR were addressed at the OP as the proprietor put questions in relation to specific AR, the chair of the OD asked him questions to which he replied in the negative. Hence, at this stage of the OP, there had been opportunity for the proprietor to make oral submissions on any of the AR.

Moreover, according to the minutes, the proprietor did not request the discussion of any of the AR. Instead, it stated that no new claim request would be filed

At the latest when the chair of the OD asked whether the hearing had been satisfactory from a technical point of view, i.e. at a point at which it must have been apparent that the discussion on substance was over, the proprietor could have requested a discussion of the AR.

The board could thus not establish that the proprietor did not have an opportunity to present its arguments on the AR at the OP before the OD.

AR withdrawn or not

It had been submitted by the opponents, but was contested by the proprietor, that all AR filed in the course of the written proceedings in opposition had been withdrawn by the proprietor during the OP. However, this is not derivable from the minutes of the OP. According to the minutes, the proprietor stated that “no new [claim] request would be filed” and there is no indication that any of the previously filed AR was withdrawn.

For the board, it is to be expected that such a withdrawal of one or more requests, i.e. a relevant statement within the meaning of R 124(1), would have been expressly recorded in the minutes.

The board added that, had the appellant made an unclear statement in relation to one or more AR, it would have been for the OD to clarify it and in so doing clarify the procedural status of the AR, or alternatively for the opponents, for whom withdrawal of the claim requests would have been beneficial, to request clarification.

As the AR filed in written proceedings in opposition had not been withdrawn by the proprietor they should have been and considered and decided upon by the OD in its decision.

In its decision, the OD held that the AR “are deemed to be on time” without however indicating whether or not this means that they were admitted into the proceedings or not.

The OD mentions further that it “only saw compliance with Art. 123(2) EPC for the buffer compositions actually tested, as found in Table 1”. The subsequent wording used by the OD “[a]ccordingly, none of the AR on file appear to comply with the requirements of Art 123(2)” is of the character of a preliminary opinion rather than a decision, because of the use of the word “appear”. Also, these two sentences are mere statements and no further explanation was given.

In not properly dealing with the AR, the OD committed a SPV.


Using the wording “it appears” or “deemed to” is to be avoided in decisions of departments of first instance. That such wording can be used in the annex to the summons is however not at stake, as the opinion in said annex being provisional by nature.

Requests for correction of the minutes

In the absence of a request for correction of the minutes, the boards have no choice than to take that the minutes as correctly reflecting what happened and what was discussed before the EPO.

This does not mean that a department of first instance is obliged to accept any request for correction of the minutes. See also Guidelines E-III, 10.4.

The minutes are not part of the decision and are not open to appeal, cf. T 978/00, Reasons 6. In opposition, there is also the other party and experience shows that the recollection of the other party is quite different from that of the party requesting correction.

The board do also not have the power to impose a correction of the minutes or a certain content of the minutes to the department of first instance, cf. T 508/08, Catchword.

Duty of clarification

In T 382/10 it was held that since the minutes fail to provide an indication that the final requests had been established before the ED deliberated and made the final decision, the ED committed a SPV.

The duty of clarification of requests by a department of first instance has been clearly stated in T 52/15, Reasons 1.7.

Conversely, in T 1063/02, Reasons 5.3, it was held that, if it is not clear for a party what the procedure is or how it will continue, it is up to said party to ask for clarification of the matter especially if no unclarity is apparent either to the other party or to the EPO.

In the present case, the OD and the proprietor had the duty to clarify the procedural situation. Why sould the opponent squeak if the situation was apparently in its favour?

On the procedure

The patent should not have been granted in the form it was as claim 1 as granted was infringing Art 123(2). The proprietor filed further requests, but the new MR was lacking IS.

It is the improper way of dealing with the AR which led to the decision of the OD to be set aside, like plenty of other ones.

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