CASELAW-EPO - reviews of EPO Boards of Appeal decisions

EP 3 353 520 B1 relates to a smart track system having embedded sensors and a method using the same.

An elastomeric track comprises embedded sensors (310, 330, 350, 390) for sensing a variety of conditions during use of the vehicle.

Brief outline of the case

The OD revoked the patent as claim 1 as granted as well as those of AR1-3 infringed Art 123(2). Claim 1 of AR4 infringed Art 123(3).

The board confirmed the revocation and did not admit AR5 under Art 13(2) RPBA.

The proprietor alleged that the OD had committed as SPV.

The proprietor’s point of view

The proprietor submitted that its right to be heard was infringed because:

(a) for the first time during the OP, the OD referred to a new objection to justify the rejection of the MR,

(b) the proprietor was taken by surprise by this new objection,

(c) the OD refused to provide further details regarding its reasons for rejecting the MR, thereby depriving the proprietor of a proper opportunity to prepare a defence for its AR,

(d) the OD developed its reasoning only progressively in response to the proprietor’s arguments, without allowing sufficient time to react to each counterargument,

(e) the OD failed to consider the teaching provided to the skilled person as a whole and focused solely on paragraph [0075] of the description and figure 2.

The board’s decision

As regards points (a) and (b), it is within the discretion of an OD to raise new objections during OP, provided that the parties are given an adequate opportunity to respond.

There is nothing in the minutes to support the claim – raised for the first time on appeal – that the proprietor was so surprised as to be unable to present its case. According to the minutes, the proprietor did not inform the OD of any difficulty in responding, nor did it request additional time or a postponement.

With respect to points (c) and (d), an OD is not required to inform the parties of the detailed reasons for its decision during the OP. Its obligation is to hear the parties, not to guide them in preparing their case or to disclose in advance the full reasoning for its decision in order to allow further reaction. A party represented by a professional representative cannot claim a right to be led through the opposition proceedings.

Point (e) relates to an alleged error in substantive assessment and therefore cannot serve as a basis for claiming a violation of the right to be heard.

The board concluded that the proprietor’s right to be heard was not infringed.

Comments

The present decision illustrates perfectly that an

• an OD is allowed to change its point of view. After all, the annex to the summons represents a provisional opinion of the OD;
• in such a situation, like when a new document is admitted, or a request is filed during the OP, the other party has to be given enough time to deal with it and to prepare a defence;
• if the party did not have enough time, it has to request more time or even a postponement. An OD is well advised to ask the party if it had enough time and to note the reply in the minutes;
• an OD is not obliged to give reasons for the future decision to come. For instance in case of a lack of N, the OD is not obliged to give a tip to the proprietor and indicate which feature the proprietor considered not disclosed, but was disclosed for the OD. It is a request I was regularly faced with in my active time. However, it is the duty of a representative to listen and be aware of what is going on during the OP. Behaving in this way, determining then the “problematic” feature is easy;
• an error in a substantive assessment is not a procedural error;
• without a least a request for correction of the minutes upon their reception, which might be refused by the OD, the chances of claiming a SPV in appeal are in general very low.  

In order for a SPV to be established, it needs in general that the party claiming it, is effectively surprised when receiving the written decision.

This is for instance the case, when arguments of one of the parties are ignored and not reflected in the decision, or a decision has been taken on a wrong request, or a request has been ignored by the OD.

T 761/24