Saturday 22 May 2010

T 358/08 – Let’s Not Change


Does the change of wording between R 64 EPC 1973 and R 99 EPC 2000 have an impact on how a notice of appeal and/or a statement of grounds of appeal has to be drafted? That is the question the Board deals with in the present decision.

If you are happy with a short answer, it’s “No”.

If you want to know why, please read on.

[1.1] Before the OD the appellant requested maintenance of the patent as granted (main request) alternatively maintenance of the patent on the basis of a first auxiliary request. The OD rejected both requests and revoked the patent.

In its notice of appeal filed on 13 February 2008, the appellant stated: “... we hereby appeal against the decision of the OD ... We ask that the decision of the OD be set aside and the patent maintained.”

[1.2] Even when construed in the context of what had taken place in the proceedings, it cannot be determined from the notice of appeal in precisely what form the appellant wished the patent to be maintained. Only when the appellant filed its statement of grounds of appeal did this become clear.

[1.3] R 99 EPC 2000 is applicable to the present appeal. […]

[1.4] The issue which arises is whether the notice of appeal in this case complied with the requirement that it should contain “a request defining the subject of the appeal.” Taken by itself, it is not easy to say what this requirement entails. The words must therefore be construed in the context of the other provisions of the EPC 2000 to discover the true meaning of the expression, but help may also be obtained by examining:
(a) what the position was before the new rule was introduced and
(b) any relevant travaux préparatoires.

The expressions used in German and French texts do not take the matter any further […]

Position before coming into force of the EPC 2000

[2] R 99 is to be compared to the previous relevant rule, R 64 EPC 1973[…].

[2.1] As helpfully suggested by the appellant, the changes can be more easily appreciated by comparing the rules in tabular form:


[2.2] As to what were the requirements of R 64 when it stated that the notice of appeal should contain “a statement identifying ... the extent to which amendment or cancellation of the decision is requested”, the answer becomes apparent from considering decisions of the Boards of Appeal which dealt with the construction of notices of appeal.

[2.3] As to this, it was recognised that the requirements of R 64 were formal in nature only […] and that a notice of appeal should be construed objectively to determine its content […]. The “extent” to which the impugned decision was requested to be amended or cancelled could therefore often be inferred, even when the notice of appeal contained no express statement in this respect. Thus where, for example, the notice of appeal stated merely “An appeal is hereby lodged,” or words to similar effect, this was often construed in the context of the case as a request to set aside or cancel the decision in its entirety; this was “the extent to which amendment or cancellation of the decision” was requested. […]

Having reviewed a bunch of decisions, the Board continues:

[2.4] In the great majority of cases, therefore, the requirement to state the extent to which amendment or cancellation of the decision was requested was somewhat toothless. Almost always the appellant wanted the decision set aside in its entirety and replaced by a different order. It was for this reason that the Boards of Appeal were able to construe very basic notices of appeal as satisfying the provisions of R 64(b). Where, however the decision contained two elements, e.g., an order relating to the patent and an order as to costs, the rule now had real bite. The notice of appeal had to say whether both elements were being appealed or only one, and the course of the appeal proceedings was thereby determined […].

[2.5] At first sight, some cases, including some of the above, might appear to go further, since they also say that such a notice of appeal (e.g., in the form “an appeal is hereby lodged”) also implicitly included a request to grant the last request before the Division below. […]

[2.6] However, the Board does not read into these decisions any statement that the notice of appeal should in fact have contained a request, even if only implicit, as to the order which the Board of Appeal was being asked to make, whether it be a request to grant the last request before the Division below or some other request. The decisions merely say how, in these particular cases, the Board construed the notice of appeal.

[2.7] Such a requirement would have given rise to difficulties, as exemplified by the facts of the present case, where an applicant-proprietor merely requested that the patent “be maintained” and it could not be objectively determined from these words, even in the context of what had taken place at first instance, in what form the proprietor wished the patent to be maintained, in particular, whether the proprietor wished the patent to be maintained as granted or in accordance with its auxiliary request before the Division or on some other basis.

[2.8] That this was not in fact a requirement of R 64(b) is made clear by other decisions of the Boards of Appeal, which are to the effect that although the notice of appeal must specify whether it is being requested that the decision be set aside in whole or in part, in the case of an appeal by an applicant or patentee the precise form in which the patent is requested to be granted or maintained is a matter for the grounds of appeal. […]

Again the Board cites and comments a whole series of decisions. It then continues:

[2.12] The Board therefore concludes that R 64(b) did not require, in the case of appeal by an applicant or proprietor, that the notice of appeal should contain, whether expressly or implicitly, a statement as to the form in which the appellant was requesting the Board of Appeal to grant or maintain the patent. This was a matter for the grounds of appeal. […]

The Board then deals with the travaux préparatoires for the EPC 2000:

[3] The EPC was revised following the Diplomatic Conference of November 2000 in the form a new text adopted by the Administrative Council in June 2001. As regards the time limits and the form of appeals to the Boards of Appeal, minor changes were made to A 108, […]

[3.2] It does not appear from the [declared overall objective of these revisions] that it was one of the purposes of these changes to alter the way in which appeal proceedings were conducted, whether in regard to the contents of the notice of appeal or the grounds of appeal.

The Board then delves into the details of the travaux préparatoires. It comes to the following conclusions:

[3.13] In conclusion, although the travaux préparatoires are not entirely clear:

[3.13.1] They do not suggest that the existing position in relation to the requirements of the notice and grounds of appeal, summarised above, was giving rise to problems or criticisms.

[3.13.2] They do not indicate an intention to make a substantive change in the requirements of the notice or grounds of appeal in this area, a change which would have far-reaching effects for many appeals.

[3.13.3] In general, they show an intention to bring the wording of the rules in relation to notices and grounds of appeal into line with the practice as developed by the Boards of Appeal.

[3.13.4] It appears that the requirement which is now found in new R 99(1)(c) to state “the subject matter of the appeal” was being equated with the former requirement of R 64(b) that the notice of appeal should contain a statement of the extent to which the amendment or cancellation of the decision is being requested as this requirement had been interpreted by the Boards of Appeal.

Finally, the Board gets down to a construction of R 99:

[4] Generally, the requirements as to the notice of appeal under R 99(1) and the statement of the grounds of appeal under R 99(2) must be read together to try and arrive at a coherent and sensible structure. The requirements must also be construed as applying to appeals of all possible types and not just appeals by a proprietor, which is the focus of the present appeal.

[4.1] As a further general remark, the Board takes into account that if it was required that the notice of appeal by an applicant or proprietor should contain a request for the grant or maintenance of the patent in a specified form, it is not clear what the position would be if the appellant later wished to amend this request, whether to broaden the claims or restrict them. On the assumption that the appellant was able to amend the request, then “defining the subject of the appeal” at the outset by reference to a set of claims which later might change would serve no useful purpose. On the alternative assumption that the appellant was not able to amend the request, this would make appeal proceedings extremely inflexible and would also be contrary to the existing practice in appeals.

[4.2] On the contrary, if a proprietor must in the grounds of appeal at the latest specify the form in which the patent is requested to be maintained, the respondent will still know at a relatively early stage in the appeal proceedings what case it has to deal with and can frame accordingly any reply which it chooses to file under A 12(1)(b) of the Rules of Procedure of the Boards of Appeal (RPBA). The appeal will then be based on these documents (together with any communication sent by the Board and any answer thereto), subject only to any amendment to a party’s case which is thereafter allowed at the Board’s discretion (Articles 12(1), 13(1) RPBA). This system provides a logical and practical framework for determining such appeals.

[4.3] Turning to the rules themselves, as already pointed out, it is not immediately clear from the wording of R 99(1) what has to be contained in the notice of appeal. If, however, R 99(2) were to make it clear that certain matters are required to be included in the grounds of appeal then this would obviously make it easier to reach a conclusion that it was not necessary to include such matters in the notice of appeal, and thus what R 99(1)(c) means.

[4.4] Unfortunately, the wording of the R 99(2) also raises problems as to its meaning. Broken out, it reads as follows:

“In the statement of grounds of appeal the appellant shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based.”

[4.5] The first problem is that in some situations at least […] the rule requires the grounds to state “the extent to which the decision impugned is to be amended”. However, under R 64(b) , what appears to be the same requirement (a statement of “the extent to which amendment ... of the decision is requested”), had been part of the requirements of the notice of appeal, so that at first sight it would appear that this requirement has been moved from the notice of appeal to the grounds of appeal (assuming the requirement has not just been duplicated). As explained above, the requirement in R 64(b), being a part of the requirement to state “the extent to which amendment or cancellation of the decision is requested”, had been construed by the Boards of Appeal in a limited way as requiring the appellant merely to state whether it was requested that the decision be set aside in whole or part. If this requirement is now a requirement of the grounds of appeal, what is left as regards the requirements of the notice of appeal?

[4.6] Second, the wording of the rule is at first sight also curious because under R 64(b) a distinction appeared to be made between “amendment” of a decision and “cancellation” of a decision (“The notice of appeal shall contain ... a statement identifying ... the extent to which amendment or cancellation of the decision is requested”), these apparently being alternative forms of order which the appellant could request […]. This distinction appears at first to be perpetuated in the new rule in the form of a distinction between “setting aside” a decision and amending it to some extent, these again being alternatives. But if this is a valid distinction, why should the appellant now be required to indicate the reasons for setting aside the decision impugned, but not any reasons for amending it to any extent?

[4.7] The versions of R 99(2) in the German and French texts do not appear to take the matter any further. […]

[4.8] These considerations are puzzling, not least having regard to the fact that it does not appear from the travaux préparatoires to have been the intention to create a substantive change in the practice in this area.

[4.9] The Board considers that the answer to this puzzle is to be found by considering the forms of order normally made on appeal. When an appeal is successful the order made by the Boards of Appeal is often in the form: “The decision under appeal be set aside and the patent is ordered to be maintained as granted/in amended form/revoked”, etc, and this is also the common form of requests made by appellants. The Board considers that R 99(2) EPC 2000 should be understood in this light, and as requiring the appellant to say, first, why the decision under appeal was wrong and should thus be set aside and then, second, what the appellant wants the Board of Appeal to order in its place (if anything). […]

[4.10] Although it is not decisive for present purposes, the RPBA are consistent with this approach, although the wording is not precisely the same. A 12(2) RPBA provides inter alia that the statement of grounds of appeal shall contain an appellant’s complete case and set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld. Although the rules do not expressly state that a proprietor/applicant-appellant should state in what form it is requested that the patent be maintained, the rules are of course framed in general terms to deal with all forms of appellants, not just applicants and proprietors. The requirement that an appellant state its “complete case” in the grounds of appeal can be understood as requiring inter alia a proprietor/applicant-appellant to indicate the extent to which the decision under appeal is to be amended, if this is not already clear.

[4.11] The reason why R 99(2) is framed as it is, as compared to the R 64 , can perhaps be understood on the basis that it was apparently considered, as appears from the travaux préparatoires considered above, that the wording of R 64(b) (“The notice of appeal shall contain ... a statement ... identifying ... the extent to which amendment or cancellation of the decision is requested.”) was not satisfactory, even though it had been interpreted by the Boards of Appeal in a relatively restrictive way that was not in fact giving rise to problems or objections. At the same, it was apparently felt that it was unsatisfactory that the rules did not expressly say anything about the grounds of appeal, even though the Boards of Appeal had developed an interpretation of what was required which again was not giving rise to problems or objections. R 99 was no doubt an attempt to restate the position using clearer language. The requirement that the notice of appeal should contain a request “defining the subject of the appeal” was no doubt thought to be a better description of the requirement that the notice should indicate whether the decision should be set aside in whole or part, since the effect of such a request was in fact to define the subject (the “extent” or “scope”) of the appeal. Again, it was no doubt thought that the requirement that the grounds of appeal should indicate the extent to which the decision was to be amended was an appropriate formulation of the requirement that the appellant should, where appropriate, state what order the appellant wanted the Board of Appeal to make in place of the order of the first instance department.

[4.12] This conclusion means that in the case of an appeal by an applicant or proprietor who wishes to have the patent maintained in a different form than that ordered by the first instance department, the grounds of appeal are required to contain a statement as to (“shall indicate”) the form in which the Board of Appeal is being requested to maintain the patent and thereby to alter the decision of the department of first instance.

This then also means that such a requirement cannot also sensibly be part of the requirements of the notice of appeal under R 99(1)(c), so that whatever the expression “a request defining the subject of the appeal” in R 99(1)(c) means (and it is not necessary for the Board to say precisely what it does mean), it cannot be understood as requiring this.

[4.13] The Board also does not have to consider how precise the indication in the grounds of appeal of “the extent to which [the decision] is to be amended” has to be, because in the present case it is not in doubt that the grounds of appeal contained a sufficiently precise indication, namely a request that the decision under appeal be set aside and the patent be maintained as granted or alternatively on the basis of sets of claims according to the first to third auxiliary requests which were filed with the grounds of appeal.

Summary and conclusion

[5] In the end, and taking all of the above matters into consideration, the Board concludes that the change in the wording in the Implementing Regulations has not altered the previous law as to the requirements of either the notice of appeal or the statement of grounds of appeal as regards the nature of the appellant’s requests. R 99(1)(c) is satisfied if the notice of appeal contains a request, which may be implicit, to set aside the decision in whole or (where appropriate) only as to part. Such a request has the effect of “defining the subject of the appeal” within the meaning of R 99(1)(c).

In the case of an appeal by an applicant or proprietor, it is not necessary that the notice of appeal should also contain a request for maintenance of the patent in any particular form. This is something which relates to “the extent to which [the decision] is to be amended”, and which is therefore a matter for the statement of grounds of appeal under R 99(2).

[5.1] The notice of appeal in the present case contained the statement “... we hereby appeal against the decision of the OD ... We ask that the decision of the OD be set aside and the patent maintained.” In accordance with the principles set out earlier in this decision this is to be interpreted as a request to set aside the decision of the OD in whole. This request defined the “subject of the appeal” within the meaning of R 99(1)(c). The request “to maintain the patent” was not inconsistent with this but otherwise added nothing. [… T]he grounds of appeal contained an adequate indication under R 99(2) of the extent to which the decision was being requested to be amended.

[5.2] The appeal is therefore admissible.

To read the whole decision, please click here.

NB: This decision has already been commented on Laurent Teyssèdre’s blog.

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