The patent relates to a system and a method for monitoring the pressures of the printing rollers in a flexographic printing machine upon starting a new job.
Brief outline of the case
The proprietors and the opponent both appealed the decision of the OD to maintain the patent in amended form according to AR2.
The OD considered that the subject-matter of claims 1 and 6 of the patent as granted and of AR 1 were not inventive over the state of the art, but that AR 2 was allowable.
The opponent withdrew its appeal during the course of the appeal procedure.
In application of the prohibition of the reformatio in peius, the proprietor was at least certain to keep the patent as maintained by the OD.
It turned out, that the board decided that claims 1 and 6 as granted were not lacking IS, and decided to maintain the patent as granted, i.e. to reject the opposition.
At the end of a first OP, the opponent/respondent informed the board that it had never received the proprietors’ statement of grounds of appeal. Having verified that the statement of grounds of appeal had never been notified to the opponent, the board decided that the provisional conclusions taken by the board so far during the OP would be set aside and that the proceedings would be continued in writing with the notification of the statement of grounds of appeal to the opponent.
The proprietors’ statement of grounds of appeal was sent afresh, whereby the opponent replied, and the board issued new summons to OP.
Both parties requested OP but both declared not to turn up at the OP. The board cancelled the OP and decided in writing.
The case is interesting in that the board decided to cancel the OP in spite of the proprietor having not withdrawn its request for OP.
The board’s position
In a communication under Art 15(1) RPBA 21, the board expressed its intention to allow the proprietors’ MRt, i.e. to decide maintenance as granted. .
Both parties announced they would not be attending the OP, with the proprietors explicitly maintained their request for OP.
The board held that in such a situation, it was not necessary for OP to be held in order to hear the opponent.
The present board noted that in several decisions, for example, T 3/90, point 1 of the reasons; T 696/02, point 7.1 of the reasons; T 1027/03, point 2 of the reasons, it has been held that an announcement that a party will not be participating in OPs can be seen a the withdrawal of that party’s request for OP and that as a consequence there was no need for OP to be held.
The present board expressed doubts as to whether a declaration of non-attendance can in fact be construed as a withdrawal of a party’s request for OP, with all legal implications, including, for instance, that the party is bound thereby. In point 2.2 of its decision J 11/94, the Legal Board of Appeal stated that, for reasons of legal certainty, any procedural declaration must be unambiguous, particularly – because of the consequences thereof – declarations terminating the proceedings.
In this board’s view, this also applies to declarations of withdrawal of the request for OP, particularly since the right to OP is a fundamental right which gives the parties the opportunity to be heard under Art 113 and Art 6 ECHR.
Furthermore, in decision J 19/03 (point 5 of the reasons), citing decisions J 11/87 (points 3.3 and 3.6 of the reasons) and J 27/94 (point 8 of the reasons), it was held that a party is normally bound by its procedural acts provided the procedural statement was clear and unconditional.
The present board was of the opinion that a party’s announcement that it will not be appearing at the hearing does not necessarily entail the withdrawal of a previously made request to present their arguments orally.
The right to OP enshrined in Art 116(1) must be seen in the context of the right to be heard under Art 113(1). It is therefore a right to be heard in OP. The right to OP cannot be understood as the right to have the board hold OP with the other parties to the proceedings. Such an understanding, which separates the right to OP from the right to be heard at OP, has no basis in the EPC as interpreted by the boards of appeal.
Since as a consequence of an announcement that a party will not be appearing at OP a party’s request for OP becomes ineffective, the board may dispense with OP if no other reason makes it necessary or desirable to hold them.
In the present case, there is no such reason, because the board has decided to allow the appellants’ main request, i.e. to maintain the patent as granted, and also because all parties announced they would not be attending the OP.
Beside the few decisions cited by the boards, in T 32/07, Reasons, Point 2,or T 958/10, Reasons, Point 3, the boards held that the declaration on non-appearance to OP boiled down to a withdrawal of the request for OP.
We have now a decision in which doubts are expressed that a declaration on non-appearance to OP can be considered as a withdrawal of the request for the OP.
For the present board, when a party declares not to participate to an OP, its request for OP becomes ineffective.
It will have to be seen whether this decision remains a one off, or if it will be followed by other decisions of the same kind. It could well be that the previous line of case law, non-appearance = withdrawal of the request, will continue to exist.
At the end of the day, the result is the same, OP are not held. Deciding what is the result of the declaration of non-appearance appaers somehow as a rather academic exercise.
My attention has been drawn to the fact when no OP is held, a further practical implication arises.
If a board considers that the request for an OP has been withdrawn, part of the appeal fee can be refunded under R 103(4,c), cf. T 517/17, Reasons Point 6.
In T 517/17, the board did not agree with T 73/17, Reasons 9.3. In T 73/17, the board decided that a declaration of non-attendance is not an effective withdrawal of the request for OP and thus does not warrant a partial reimbursement of the appeal fee under R 103(4,c).
If in case of a declaration of non-attendance, the request for OP is deemed “ineffective”, like in the present case, T 245/19. If the request for OP is deemed “ineffective“, then there is no partial reimbursement of the appeal fee under R 103(4,c) possible. The present board has thus taken due account of the finances of the EPO.
The present differences in the treatment of a declaration of non-attendance show once more that procedurally speaking a similar situation is not decided in a similar way. This is highly disturbing for parties to the appeal procedure and should not occur. Filing an appeal is not participating to a procedural lottery. Procedural decisions being discretionary decisions, a petition for review does also not help, cf. R 6/20, commented in this blog.
Why not applying R 115(2)?
R 115(2) provides that, if a party duly summoned to OP before the EPO does not appear as summoned, the proceedings may continue without that party.
I do not know a case in which a party having declared not to appear has actually appeared, but what if the party would, in spite of its declaration, nevertheless appear, especially if the request for OP was, as in the present case, unconditional?
Most of the requests for OP are conditional to a request being granted or not. The risk of nevertheless appearing to a scheduled OP can thus be considered as relatively low.
Declarations of non-appearance commonly follow a communication under Art 15(1) RPBA, and depending on the content parties decide or not to appear at the OP.
Rather than deciding whether a declaration of non-appearance either boils down to a withdrawal of the request for OP, or that the request for OP becomes ineffective, would it not be better to simply apply R 115(2)?
It means that scheduled OP would be held, and in the absence of one or more parties duly summoned, to established their absence, and then in the absence of all parties to end the OP and decide in writing.
From a legal point of view, it would be, in my humble opinion, the safest way of doing. I do however agree, that it could cost a bit of time, especially for the boards. The chair of the boards’ objective of reducing the backlog of files would be slightly delayed, but legal safety would be gained.
By applying R 115(2) as it should be, the question of a partial reimbursement of the appeal fee under R 103(4,c) would not at all occur.
On the procedure
It is amazing to see a party waiting the end of an OP to declare that it had not received the statement of grounds of appeal of the appellant. That a board missed sending the statement of grounds of appeal is as well surprising. This did however occur in two cases in which a petition for review was successful, cf. R 7/09 and R 4/17.
The board decided maintenance of the patent as granted, whereby the OD decided maintenance according to AR 2. The decision of the OD is one of the nearly 60% of decisions set aside by a board. When looking at final actions after appeal on opposition, in only 20% of cases the opposition was rejected.