Key points
- Rule 82(1) is rarely applied in practice because most often parties request oral proceedings in opposition. However, in this case, no oral proceedings were requested and the OD issued the interlocutory decision that taking into account the amendments made by the proprietor, the patent and the invention to which it relates meet the requirements of the EPC. This decision was issued in writing about 10 months after the proprietor's response was forwarded to the opponent, without oral proceedings. No oral proceedings were requested (by the opponent; the patentee's amended main request was granted).
- The opponent appeals.
- The Board finds the above to be a substantial procedural violation, in particular of Rule 82(1) EPC.
- " The Board finds that the issuing of a communication under Rule 82(1) EPC was required in that specific situation. Rule 82(1) EPC reads as follows: "Before the opposition division decides to maintain the European patent as amended, it shall inform the parties of the text in which it intends to maintain the patent, and shall invite them to file their observations within two months if they disapprove of that text." Rule 82(1) EPC ensures that the right of the parties to be heard is respected in opposition proceedings before any decision is taken. In the present case, no objection against the amended main request was raised by the opponent and - evidently - the opposition division had no such objection either. However, contrary to the stipulations of Rule 82(1) EPC, the parties had not been informed of the opposition division's intention to maintain the patent on the basis of the amended main request and on the description and drawings as contained in the specification. Furthermore, the parties were not invited to comment on that text within a specified period as also foreseen in Rule 82(1) EPC."
- As a comment, the purport of Rule 82(1) is not very clear to me, except for the case where the OD proposes amendments of their own motion in written proceedings.
- Van Empel, para. 480, explain the original idea as follows: “It may also be, however, that the Opposition Division finds that the patent can be maintained, provided it is amended to some extent. Normally this amendment takes form progressively in the course of communications between the Opposition Division and parties concerned. However, at a certain moment the former should make up its mind and state that it is of the opinion that the patent as amended in the indicated way can be maintained. However, again the basic principle of Article 113(2) comes into play, and thus the Opposition Division must submit the envisaged text of the amended patent to the patentee for approval [].* Curiously, in this regard a similar position has been given to opponents. According to Rule 58(4) [EPC 1973], they also are requested to state their observations on the text which is envisaged by the Opposition Division."
- * = This obviously refers to the second alternative in Art. 113(2), i.e. to amendments proposed by the OD of own motion: " The European Patent Office shall examine, and decide upon, [] the European patent only in the text submitted to it, or agreed, by [] the proprietor of the patent", because if the patentee submitted the text, no further approval of the text by patentee is required under Article 113(2) EPC.
- That's why the Rule 82(1) EPC communication can be dispensed with if the text is the one decided by the patentee and the opponent has been given the opportunity to comment. See G1/88, r.6: "Accordingly, Rule 58(4) EPC does not need to be applied when the patent proprietor has already given his express approval of the text in which the Opposition Division intends to maintain the patent in accordance with Article 102(3) EPC. Irrespective of this, the opponent must have had - or be given - sufficient opportunity, according to the circumstances, of commenting on the new text. He can be given this opportunity, especially where the written procedure is being used, through the application of Rule 58(4) EPC."
- The Board is also critical that the OD had assumed that the description was not to be amended, even though patentee had not expressly stated so. This may indeed be an issue of Article 113(2) EPC. However, the patentee did not appeal and it find it not so clear whether an opponent can invoke a violation of Article 113(2).
T 2610/18 -
Summary of Facts and Submissions
I. An appeal was filed by the opponent against the interlocutory decision of the opposition division dated 22 August 2018 in which the opposition division found that European patent No. 2 958 461 in an amended form met the requirements of the EPC.
source http://justpatentlaw.blogspot.com/2022/01/t-261018-rule-821-case.html
