T 1536/08 12-08-2010

1. The appeal is admissible.

2. Substantial Procedural Violation.

2.1 It is established jurisprudence of the Boards of Appeal, see inter alia J 7/82 (OJ EPO 1982, 391), T 94/84 (OJ EPO 1986, 337) and T 135/96, that the right to be heard enshrined in Article 113(1) EPC also guarantees the right to have relevant grounds that could potentially influence the outcome taken into account in the written decision. In the case of a decision rejecting the opposition, it must therefore take into account the ground(s) for opposition raised as well as facts and evidence put forward in support of these grounds, inter alia the cited prior art documents. Failure to consider evidence will normally constitute a substantial procedural violation of this fundamental right as it deprives the party of the right to have its case fully heard.

2.2 In the opposition as filed the Appellant-Opponent rested his case squarely on O1 to O3 as evidence of prior art. This evidence was provided in the form of photocopies of the relevant pages. The notice of opposition, see page 5, second paragraph of section 5.3, however, stated: "The enclosed documents O1-O3 are copies from the original printed versions and if considered necessary original printed versions can be provided in a limited number (at least one), if considered necessary". This constitutes a clear and unmistakable offer to give evidence on the authenticity of O1 to O3 if this is "considered necessary". This conditional offer can only be read as meaning: if authenticity should become an issue.

2.3 In the subsequent procedure authenticity did indeed become an issue. After initially accepting O1 to O3 as closest prior art (see its communication under Article 101(2) and Rule 581(1) to (3) EPC, dated 8 June 2007, points 9 and 10), the opposition division in its written decision then decided otherwise. In reasons 3, it held that, "no proof was provided that the subsequent pages showing the technical details of the machines actually belong to the aforesaid manuals because the printing number is not mentioned on these pages. The Opponent didn`t bring up an original bound manual either." For these reasons it decided that "O1 to O3, cannot be considered as prior art in the sense of Article 54(2)".

2.4 The decision to reject the opposition ultimately rests on the opposition division's negative finding regarding authenticity of O1 to O3. Had it admitted O1 to O3 the division would have needed to consider this prior art before it could have conclusively decided the case made against the patent based thereon.

However, the decision completely ignores the unambiguous offer by the opponent in the notice of opposition to provide the original printed versions of O1 to O3, see above.

Given the fact that the opponent's offer to provide the original printed versions was made in due time and that such evidence is central to the Appellant-Opponent's case - which could only be decided conclusively by considering O1 to O3 - the failure to consider this offer constitutes a violation of the right to be heard. As a result the first instance proceedings are fundamentally flawed and have been subject to a substantial procedural violation.

2.5 As the procedure leading to the decision under appeal is fundamentally deficient the Board is compelled to set the decision aside without any consideration of the merits of the appeal.

3. Remittal and reimbursement of the appeal fee

3.1 Article 11 of the Rules of Procedure of the Boards of Appeal provides for the remittal of the case to the department of first instance if a fundamental deficiency is apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise. The Board is unaware of any such reasons and in fact both parties request remittal as main request. It therefore decides to remit the case to the opposition division in order to procure and inspect the originals of documents O1 to O3 and in the light of such evidence to then decide the case on the basis of the remaining (auxiliary) requests. Such remittal shall be without prejudice to the merits of the case, nor does it abrogate the parties' right under Article 116 EPC to have their complete case heard at oral proceedings in accordance with their final auxiliary requests.

3.2 The violation of this fundamental procedural right has directly led the Appellant-Opponent to seek redress by lodging an appeal. For this reason the Board finds it equitable to reimburse the appeal fee in accordance with Rule 103(1)(a) EPC.

4. Apportionment of Costs

The appeal is the direct result of the division's failure to procure evidence already offered by the Appellant-Opponent, rather than that it is due to a culpable error or oversight on the part of the latter. The Board therefore holds that a different apportionment of costs than provided for under Article 104(1) EPC is not equitable and refuses this request by the Respondent.