CHAPTER X DECISIONS
1. Basis of decisions
1.1 General remarks
"The decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments."
»»Art. 113(1)
This provision is intended to ensure that no party can be taken by surprise by grounds for a decision against his application on which he did not have an opportunity to present his comments.
In the substantive examination the applicant must have an opportunity of presenting his comments on all the grounds invoked against his application.
In opposition proceedings, if the patent is to be revoked it should be ensured that especially the proprietor of the patent was given sufficient opportunity to defend himself and similarly, if the oppositions are to be rejected or if, despite the claims of the opponents, the patent is to be maintained in amended form, especially the opponents should be given the same opportunity.
1.2 Examples
If the facts and grounds essential to a decision have been submitted by one party and if the party whose case is to be rejected has been afforded sufficient time to comment, the principle concerning the right to a hearing set out in Art. 113(1), will have been respected. If the decision in opposition proceedings is to be based on grounds which were raised in the examination proceedings, but not in the notice of opposition, the observations by the parties or the communications of the Opposition Division, these must be introduced (i.e. raised for discussion) by the Opposition Division in the opposition proceedings before the decision is given so as to afford the parties an opportunity to comment. If the opposition is based on lack of inventive step, the proprietor of the patent must expect that the state of the art newly designated in the opposition proceedings will be considered in conjunction with the state of the art described in the introductory part of an independent claim. However, if new facts and grounds are introduced during the proceedings or if the facts and grounds on which the envisaged decision is to be based were not stated so unambiguously and clearly in the written submissions of the parties as to give a party occasion to comment, the party concerned must be given an opportunity to submit an opinion and to produce evidence before the decision is given.
2. Consideration of time limits
A decision may not be given until any time limit set has expired unless all the parties affected by the time limit expressly agree that it need no longer be observed or have submitted their final opinions before it expires.
Moreover, as a rule, decisions should not be given until an internal EPO time limit (e.g. 20 days) following upon the official time limit (but from which the parties may derive no rights) has expired so as to ensure that documents received at the end of the period officially allowed have actually been entered in the files when the decision is being taken and can be taken into account in the decision.
With reference to submissions and applications received after expiry of a time limit see VIII, 1.8.
3. Decisive text of documents
»»Art 113(2)
"The EPO shall decide upon the European patent application or the European patent only in the text submitted" and "agreed by the applicant for or proprietor of the patent"
and last used as a basis for the proceedings. Consequently, for example, an amended version proposed by the Examining or Opposition Division (see C-VI, 15.1 and D-VI, 4.2 and 7.2) may only be adopted as a basis for the decision if it has been approved by the applicant for or the proprietor of the patent.
In the case of one or more subsidiary request(s) (sometimes referred to as "auxiliary requests") directed to alternative texts for grant or maintenance of a patent, every such request qualifies as a text submitted or agreed by the applicant for or proprietor of the patent within the meaning of Art. 113(2) (see T 234/86, not published in OJ), and therefore must be dealt with in the order indicated or agreed to by the applicant or proprietor, up to and including the highest-ranking allowable request, if any.
4. Written form of decisions
»»Rule 68(1)
4.1 General remarks
Decisions are to be produced in writing. The same applies in the case of decisions delivered at the end of oral proceedings (see III, 9).
No complete rules can be laid down about the form and content of decisions, which will depend on the requirements of each particular case.
The written decision will contain:
- the names of the parties to the proceedings (applicant, patent proprietor, opponents) and, if applicable, their representatives,
- the tenor, and, if necessary,
- the facts and the submissions,
- the reasoning and
- the communication of the possibility of appeal (Rule 68(2)),
- the signature(s) and the name(s) of the employee(s) responsible.
»»Rule 70(1)
If the decision is produced by the employee responsible using a computer, the seal of the EPO may replace the signature. If it is produced automatically by a computer the employee's name may also be dispensed with (Rule 70(2)). The file copy contains the names and the actual signature(s) of the employee(s) responsible.
The presentation of the facts and the submissions, the reasoning and the communication of the means of redress are generally omitted when a decision merely meets the requests of all the parties concerned; this applies in particular to the decision on the grant which is based on the documents which the applicant has approved (Art. 97(2)(a)). The same applies when the patent is maintained in an amended form because this is preceded by a final interlocutory decision pursuant to Art. 106(3) concerning the documents on which the maintenance of the patent is to be based (see D-VI, 7.2.2). In individual cases consideration may also be given to the reasoning of those decisions which merely meet the requests of the parties. If, for example, a number of reasons are invoked for a request for re-establishment, of which only one justifies the re-establishment, a reasoned decision on re-establishment may be appropriate, in order to clarify the official action.
Even in those cases in which the decision contains no communication of the means of redress, an appeal can be filed if the decision is incorrect, e.g. if the grant was not made on the basis of the documents which the applicant had approved.
4.2 The tenor
The tenor may be, for example, as follows:
"The European patent application ... is hereby refused according to Art. 97(1) EPC."
"The opposition to the European patent ... is hereby rejected."
"The request for restitutio in integrum is hereby rejected."
4.3 Facts and submissions
Facts and submissions have to be given insofar as they are significant for the decision.
Under facts a brief description of the case and a summary of the main reasons on which the decision is based and of the most important replies of the parties should be given. These points, however, are to be covered in detail in the subsequent reasoning. Facts and submissions which are irrelevant to the decision, e.g. requests for amendment which are not maintained, are to be omitted.
The facts and submissions must make clear what is the subject of the application and show on which documents (particularly on which claims) the decision is based. The text of the independent claim(s) and other especially important claims or passages of the description on which the decision is based, must be cited verbatim in the language of the proceedings (Rule 1(2)). As regards the dependent claims, it may be sufficient to refer to the file content.
4.4 Decision on the file as it stands
Applicants may request a decision "on the file as it stands", e.g. when all arguments have been sufficiently put forward in the proceedings and the applicant is interested in a speedy appealable decision. In such a case the decision will be of a standard form, simply referring to the previous communication(s) for its grounds and to the request of the applicant for such a decision.
5. Reasoning of decisions
»»Art. 113(1)
»»Rule 68(2)
The reasoning must contain, in logical sequence, those arguments which justify the tenor. It should be complete and independently comprehensible, i.e. generally without references. If, however, a question has already been raised in detail in a particular communication contained in the file, the reasoning of the decision may be summarized accordingly and reference may be made to the relevant communication for the details.
The conclusions drawn from the facts and evidence, e.g. publications, must be made clear. The parts of a publication which are important for the decision must be cited in such a way that those conclusions can be checked without difficulty. It is not sufficient, for example, merely to assert that the cited publications show that the subject of a claim is known or obvious, or, conversely, do not cast doubt on its patentability; instead, reference should be made to each particular passage in the publications to show why this is the case.
It is particularly important that special attention should be paid to important facts and arguments which may speak against the decision made. If not, the impression might be given that such points have been overlooked. Documents which cover the same facts or arguments may be treated in summary form, in order to avoid unnecessarily long reasonings.
The need for complete and detailed reasoning is especially great when dealing with contentious points which are important for the decision; on the other hand, no unnecessary details or additional reasons should be given which are intended to provide further proof of what already has been proven.
If during examination proceedings a main and subsidiary requests have been filed (see X, 3) and none of these is allowable, the reasons for the decision to refuse the application pursuant to Art. 97(1) must not be limited to the main request, but must also comprise the reasons for the non-allowability of each subsidiary request. If one of the requests is allowable the communication pursuant to Rule 51(4) is to be issued on the basis of the (first) allowable request and must be accompanied by an explanation of the reasons why the higher-ranking requests are not allowable. Should the applicant, in response to the communication pursuant to Rule 51(4), maintain higher-ranking requests which are not allowable, a decision to refuse the application pursuant to Art. 97(1) will be issued; the reasons must set out the grounds for the non-allowability of each request which ranks higher than the allowable request. In respect of the allowable request the decision to refuse must mention that the applicant has failed to give his approval to it (Rule 51(5)). These
matters are also dealt with in Legal Advice no. 15/98 rev, OJ 3/1998, 113.
Similarly, if in opposition proceedings the proprietor has submitted in addition to his main request one or more subsidiary requests, none of which is allowable, the patent must be revoked and the decision must set out, in respect of each request submitted and maintained by the proprietor, the reasons for not allowing it. Where one of the proprietor's requests directed to the maintenance of the patent in amended form is allowable, an interlocutory decision is to be issued on the basis of the (first) allowable request; it has to set out the reasons why this request meets the requirements of the Convention and, additionally, the reasons why the higher-ranking requests do not.
In so far as a decision includes the rejection of any of the multiple requests, such decision may not be taken until the applicant or proprietor has been informed, with respect to each of these requests, of the reasons for not allowing them, so that the applicant or proprietor is not deprived of the opportunity to present comments (Art. 113(1) - right to be heard). Similarly, an opportunity to comment must be granted to the opponent(s) with respect to a subsidiary request before it is held allowable by an interlocutory decision (see D-VI, 7.2).
Practical considerations will determine at which point in the decision the subsidiary request is dealt with. The main emphasis should be laid on dealing with the independent claims, whereas the reasoning as regards dependent claims does not need to be so detailed, unless special importance is attached to them in any particular case.
There is no strict rule that a decision has to deal with all the points
which are or may become contentious between the deciding authority and the
parties concerned. For reasons of economy it is, however, appropriate to
base a rejection, in order to come as early as possible to a final decision
in a case, on a number of separate reasons. Therefore an Examining or Opposition
Division should deal with those questions which may be expected to become
relevant in second instance insofar as this is possible without substantial
additional effort, so that, in the event of a successful appeal, the matter
does not have to be remitted to the deciding authority by the Board of Appeal.
6. Decisions which do not terminate proceedings
Such decisions (interlocutory decisions) may be given in principle. However, it should be borne in mind that pursuant to Art. 106(3), "a decision which does not terminate proceedings as regards one of the parties can only be appealed together with the final decision, unless the decision allows separate appeal".
»»Art. 106(3)
The competent department should use its discretion as to the need for an interlocutory decision (see, however, D-VI, 7.2.2 with respect to the interlocutory decision for maintenance of a patent in amended form in opposition proceedings). To avoid fragmentation of the proceedings, such decisions should be the exception rather than the rule and should be given only if the duration or cost of the proceedings as a whole is thereby reduced. The interests of the parties should also be borne in mind as appropriate. In the normal course, an interlocutory decision should be contemplated only for the purpose of ruling that separate appeal may be made, as only in this way can a decision be obtained on a preliminary point before the final decision terminating the proceedings is reached. (The proceedings must be suspended until the decision has become final.)
It is especially important to allow separate appeal where the continuation of the proceedings depends on a preliminary ruling on a fundamental point of law, e.g. where different Boards of Appeal have given different rulings or conflicting decisions have been given by different Examining or Opposition Divisions and no decision on appeal has been given in the matter. Interlocutory decisions must state the reasons on which they are taken; if it is decided not to allow separate appeal, the reasons for this ruling may be given only in the final decision.
7. Binding nature of decisions on appeals relating to the same case
»»Art. 111(2)
If a department has to give a decision in a case which has already been remitted by the Board of Appeal for further prosecution to that department it "shall be bound by the ratio decidendi of the Board of Appeal, in so far as the facts,"
e.g. the subject-matter of the patent and the relevant state of the art, "are the same".
An Opposition Division is not bound by a decision of a Board of Appeal on appeal against a decision from an Examining Division (see T 167/93, OJ 6/1997, 229). The exclusive phrasing of the last sentence of Art. 111(2), only mentioning the Examining Division being bound by the decision on appeal against a decision of the Receiving Section, makes this clear. Opposition proceedings are entirely separate from the examination proceedings and the Opposition Division is entitled to examine the facts, evidence and arguments anew, particularly since another party (the opponent) is now involved. It should, however, take due notice of the assessment of these facts, evidence and arguments as contained in the reasons of the decision of the Board of Appeal.
8. Information as to means of redress
»»Rule 68(2)
"Decisions of the EPO which are open to appeal shall be accompanied by a written communication of the possibility of appeal. The communication shall also draw the attention of the parties to the provisions laid down in Art. 106 to 108, the text of which shall be attached. The parties may not invoke the omission of the communication."
9. Notification
»»Art. 119
Decisions must be notified as a matter of course (see I, 2).
10. Correction of errors in decisions
Correction of errors in decisions must be clearly distinguished from correction of errors in documents filed by the applicant (or patentee), pursuant to Rule 88. For the latter, see A-III, 6.5 and C-VI, 5.9. Correction of errors made by the applicant (or patentee) in application (or patent-)documents cannot be arrived at in a roundabout manner through correction of the decision to grant (or maintain in amended form).
Correction of a decision is admissible only if the text of the decision is manifestly other than intended by the department concerned. Thus only "linguistic errors, errors of transcription and obvious mistakes"
in decisions can be corrected.
»»Rule 89
The documents approved by the applicant for grant or approved by the patentee for maintenance in amended form are part of the decision to grant (see T 850/95, OJ 4/1997, 152) or to maintain in amended form, respectively. If a decision relates to wrong or incomplete documents, e.g. in the case of omission from a granted patent of claims, description parts or drawings which had already been filed as replacement and whose admissibility was never at issue during earlier proceedings, a correction of the text of the description or claims or of the drawings should be allowed.
However, this does not relieve the applicant or patentee from the duty to properly check the documents as proposed for grant or for maintenance in amended form, respectively.
Corrections of decisions are to be made by a decision at the reasoned request of one of the parties or by the EPO of its own motion. If the request for correction is refused, this decision must be reasoned (see T 850/95, OJ 4/1997, 152). These reasons must previously have been communicated to the requester (Art. 113(1)).
|
