In this case the opponents appealed against the decision of the Opposition Division (OD) – dated April 19, 2010 – to maintain the opposed patent in amended form.
At the opening of the oral proceedings, which took place on May 22, 2013, the patent proprietor requested the board to remit the case to the first instance because the contested decision contained severe procedural deficiencies. It pointed out that the decision contained no statement as regards the opposition ground under A 100(b).
The appellants contested both the admissibility and allowability of the late-filed auxiliary request. They further requested that the case not be remitted to the first instance, in view of the duration of the proceedings.
What did the Board do with this request?
[1.1] Under the provisions of R 111(2), appealable decisions must be reasoned. The ground underlying this requirement is closely linked to the principle of the right to be heard laid down by A 113, which means that the parties are able to determine whether their arguments have been duly considered even if not accepted. This requirement is also clearly related to the provisions of A 108 insofar as the reasoning developed by the deciding body constitutes the basis for the grounds of appeal.
[1.2] In the present case, it is manifest that the contested decision does not contain any decision, let alone any reasoning, relating to the ground for opposition based on A 83 raised by the opponents.
[1.3] The appellants objected to the admissibility of this request on the grounds that it was filed late and by a party which had not appealed. However, as a matter of principle, a substantial procedural violation, due to its very nature, may be raised at any stage of the appeal proceedings. Although the respondent waited until the last minute to introduce this objection, the procedural mistake is so obvious that the appellants cannot claim to be surprised. Obviously, the representatives were aware of this deficiency in the contested decision (see e.g. statement of grounds of appeal from opponent 2; page 3, point 3).
[1.4] It is well-established case law that a party may, during appeal proceedings, file any kind of request aiming at the maintenance of the result obtained at the first-instance stage (cf. Enlarged Board of Appeal decisions G 9/92  and G 4/93 ). An objection based on a severe procedural violation is thus not excluded. The request is therefore admissible.
[1.5] As to its allowability, as already stated above, the lack of any reasoning, let alone an explicit decision, relating to the objection based on A 100(b) cannot be disputed. The minutes of the oral proceedings shows that a debate took place on this issue, contrary to the respondent’s initial assertions. The lack of substantiation amounts to a substantial procedural violation which justifies that the decision be invalidated.
[1.6] The board is not satisfied that the other grounds cited as procedural violations are such as to affect the validity of the contested decision. It is established case law of the boards of appeal that reasoning which is not sufficiently developed and thus not convincing enough cannot be regarded as a substantial procedural violation. The same applies to a mistaken evaluation of a piece of evidence or to a wrong conclusion drawn on the basis of the documents on file. This is also true where an error would not have led to a different outcome of the proceedings (see in particular T 144/94 ; T 12/03 [4.5]; T 17/97 [8.2]).
[1.7] As to the request for remittal to the first instance, under the provisions of Article 11 RPBA the board must remit the case to the department of first instance if fundamental deficiencies are apparent, unless special reasons present themselves for doing otherwise.
In the present case, considering that the application was filed on 5 October 2001 and that the opposition proceedings started on 4 October 2007, the board is of the opinion that a remittal is not appropriate because the length of the procedure demands that a final decision be reached without delay. Moreover, the board notes that, as regards the procedural violation, the respondent could have raised its concerns at the beginning of the appeal phase, which could have led to speedier prosecution. Therefore, the request for remittal is rejected.
The patent was finally revoked.
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