Key points
- The patentee requests extension of the time limit to file a response to the opposition under Rule 79. The extension is refused. The patentee files no response. The OD issues the written decision revoking the patent. The patentee appeals.
- The Board finds no substantial procedural error on the side of the OD.
- " The opposition division's refusal of the proprietor's extension request appears to be problematic because it did not give any specific reasons why it considered the reasons for the request insufficient. However, the consequence of a possible error in the exercise of its discretion not to extend the time limit would (merely) be that late submissions by the proprietor could not be disregarded. In the absence of any submissions by the proprietor during the opposition proceedings, however, the opposition division's possible lack of proper reasoning has no effect." (i.e. the error is harmless)
- " It is common ground that the rejection of the extension request did not terminate the opposition proceedings. Therefore, as the non-compliance with the four-month time limit did not lead to a direct legal consequence to the detriment of the proprietor, and as the opposition division did not decide on the opposition until eleven months after the refusal of the extension request, the proprietor was still in a position to respond to the notice of opposition well beyond the time limit."
- It seems useful that the Board explains this.
- The patentee gave the substantive reasons for patentability in the Statement of grounds.
- The Board holds the whole statement of grounds inadmissible under Art. 12(4) RPBA 2007.
- Note, this does not make the appeal inadmissible for failure to file a Statement of grounds.
- The Board: " A decision not to take into account the proprietor's submissions under Article 12(4) RPBA 2007 does not necessarily lead to the revocation of the patent. The decision under appeal is still to be reviewed by the board, which might overturn the impugned decision, e.g. if it is not convinced by the reasons given by the opposition division or in the event of a substantial procedural violation."
- This statement may be uncontroversial for the patentee as respondent, but seems remarkable for the case of the patentee as appellant, as is here the case.
EPO
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/05/t-212018-file-no-response-to-opposition.html
