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Case law 25 nov 2021

Substantial procedural violation: decision of the opposition division is not sufficiently reasoned

-dit artikel is alleen in het Engels beschikbaar-In this case, the opponent filed an appeal against the decision of the Opposition Division (OD) to reject the opposition. According to the appellant (opponent), the OD disagreed with its novelty objection by merely referring to the document as whole. With respect to its inventive step objection, extensive arguments were provided in writing, but were not addressed in the decision. The BoA concluded that the impugned decision was tainted by substantial procedural violations since it was not reasoned in the meaning of Rule 111(2) EPC. The case was remitted to the OD and the appeal fee was reimbursed.

In the appeal, the appellant brought forward that the impugned decision addressed its interpretation of a feature within the novelty analysis (in view of D1 or D2) by merely referring to the patent as a whole. In the appellant’s view, this represented an insufficient reasoning. Moreover, with respect to inventive step starting from documents D3, D4 or D5, extensive arguments were provided in writing. However, the impugned decision did not indicate which features were not disclosed by these documents and why the documents could not define a valid starting point in the problem and solution approach.

According to the respondent (the patent holder), for assessing compliance of the decision with Rule 111(2) EPC, it is not relevant whether the decision accurately addressed each and every argument. To support this view, the respondent cites T 1231/03 and T 647/93, which indicated that even a deficient or ill-founded reasoning was sufficient if it assessed the main issues under dispute.

As regards the inventive step objection, the respondent asserts that the impugned decision indicated that D3, D4 or D5 did not define suitable starting points for inventive step attacks because they each disclosed fewer features than documents D1 and D2. Moreover, when dealing with this issue at the oral proceedings before the Opposition Division, the appellant had merely referred to its arguments in the written procedure. Hence, according to the respondent, it was not plausible to allege that the OD did not provide sufficient reasoning if the issue was not relevant enough to be discussed orally.

According to the BoA, a general reference to the patent specification as a whole, neither indicating which parts of the disclosure played a role nor why these parts of the disclosure went against the appellant's arguments, leaves the reader in the dark as to the factual and legal aspects leading the Opposition Division to its conclusion. Hence, the reasoning provided does neither allow the appellant to respond to the decision nor the Board to review it.

It was not plausible to allege that the OD did not provide sufficient reasoning if the issue was not relevant enough to be discussed orall.

In relation to T 1231/03 and T 647/93, cited by the respondent, the BoA asserts that a decision can be considered reasoned also if it contains some gaps in its reasoning. However, in the present case the only reasoning provided for the issue under dispute is a reference to the patent as a whole, which does not allow the parties or the Board to understand the specific facts and reasons on which the decision was based.

As regards the respondent’s argument that the appellant, during oral proceedings, had merely referred to the arguments submitted in writing, the BoA asserts that by explicitly referring to the written arguments, the appellant confirmed that these objections were not withdraw and had to be duly considered in the decision. Therefore, the decision must be reasoned also for these objections within the meaning of Rule 111(2) EPC.

The BoA also mentions that the OD was of the opinion that D2 did not disclose two features (1.6 and 1.7) and that D1 did not disclose one feature (1.7). The appellant submitted that D4 and D5 each did not disclose feature 1.7 i.e. a similar situation as for D1. Thus, the reasoning that that D3, D4 or D5 did not define suitable starting points for inventive step attacks because they each disclosed fewer features than documents D1 and D2 is at least for the objections starting from documents D4 and D5 insufficient since it does not contain a logical chain of facts and reasons allowing the reader to understand why the OD concluded that D4 and D5 disclosed less features than D1 and D2 and why they were considered less relevant than D1 and D2 for the question of inventive step.

In view of the above, the BoA concludes that the decision of the OD is not reasoned within the meaning of Rule 111(2) EPC, which constitutes a substantial procedural violation. The BoA concludes that the case should be remitted to the OD for further prosecution pursuant to Article 111(1) EPC and Article 11 RPBA 2020 and that reimbursement of the appeal fee pursuant to Rule 103(1)(a) EPC is equitable.

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