The present decision, the knowledge of which I owe to fellow EC member Manolis, deals with an appeal against the revocation of the opposed patent by the Opposition Division (OD).
The admissibility of the appeal was questioned by the opponents on three grounds:
(1) The patent proprietor had filed with the grounds of appeal only new requests which were different from the one upon which it was decided at first instance and had not submitted any statement that the decision under appeal was incorrect; moreover, even though the notice of appeal mentioned as request the maintenance of the patent as granted, this request had not been maintained in the statement of the grounds of appeal; therefore, the statement of the grounds of appeal did not contain any discussion of the decision under appeal and was inadmissible.
(2) The patent proprietor had not attempted during opposition proceedings to overcome the objections raised by the opponents even knowing the OD’s opinion on the only request pending and had not even replied in writing to the objections raised; therefore, his appeal should have been limited to defend the only request pending before the department of first instance (reference was made to G 9/91).
(3) Since the objections which had led to the revocation of the patent were known to the patent proprietor at least from the summons to the oral proceedings (OPs) before the first instance, he could have submitted amended claims already during the first instance proceedings; since he had submitted new requests for the first time with the grounds of appeal and these requests did not originate from objections which became known for the first time from the decision under appeal, the appeal was inadmissible as found in the similar case T 39/05. One of the opponents submitted also that a question had to be referred to the Enlarged Board (EBA) if the present appeal, contrary to T 39/05, would have been found admissible by the Board.
[1.1] Since the patent in suit was revoked by the OD the patent proprietor was adversely affected by the decision of the department of first instance and was entitled under A 107 to file an appeal against this decision (see e.g. T 457/89 [1]).
The requirements for the admissibility of the appeal are governed by A 108 and R 99.
It has not been disputed that the patent proprietor’s appeal complies with the requirements of A 108, first and second sentence, and R 99(1)(a),(b) and (c) and R 99(3) and that a statement of the grounds of appeal was filed within four months of notification of the decision as required by A 108, third sentence. The Board has also no doubt that the appeal complies with these requirements.
[1.2] A 108, third sentence, requires also that the statement of the grounds of appeal is filed in accordance with the Implementing Regulations.
In particular, R 99(2) specifies that the statement of the grounds of appeal 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.
It was not disputed that all the requests submitted with the statement of the grounds of appeal, which requests are different from the only request pending before the department of first instance, i.e. the rejection of the oppositions, intend to overcome the novelty objection based on the disclosure of document D20b which led to the revocation of the patent; moreover, the statement of the grounds of appeal contains a discussion of the novelty of the claims of the new requests with respect to the disclosure of document D20b and of the other documents cited during the opposition proceedings.
Therefore, even though the statement of the grounds of appeal does not discuss explicitly the reasoning of the decision under appeal with respect to the then pending only request, it is immediately apparent that
- the new requests try to overcome the objections of the department of first instance contained in the decision under appeal and establish therewith a causal link with the decision;
- the statement of the grounds of appeal indicates the reasons for setting aside the decision impugned;
- the statement of the grounds of appeal indicates the facts and evidence on which the appeal is based.
Therefore, the appeal complies in the Board’s view also with the requirements of A 108, third sentence, and R 99(2) (see also Case Law of the Boards of Appeal VII.E.7.6.2(a) on pages 856 and 857 as well as VII.E.7.6.2(d) on pages 858-859 and decisions T 162/97 [1.2-3] and T 934/02 [headnote 1;2]). Moreover, the above finding is not contrary to the decision G 9/91 [18], which states that
“The purpose of the appeal procedure inter partes is mainly to give the losing party the possibility of challenging the decision of the OD on its merits. It is not in conformity with this purpose to consider grounds for opposition on which the decision of the OD has not been based … This approach also reduces the procedural uncertainty for patentees having otherwise to face unforeseeable complications at a very late stage of the proceedings, putting at risk the revocation of the patent, which means an irrevocable loss of rights.”
In fact, this decision specifies that to challenge the decision under appeal on its merits is the main purpose of the appeal but not its only purpose and relates in particular to the introduction in appeal of fresh grounds for opposition which would cause an unacceptable procedural uncertainty for patentees, i.e. it relates in particular to a legal situation very different from the present one (see also T 162/97 [1.2, last §]). Furthermore, G 9/91 [19], by stating that a patent amended during appeal proceedings is to be fully examined as to its compatibility with the requirements of the EPC, confirms implicitly that new requests based on amended claims do not render automatically the appeal inadmissible and that the patentee cannot be bound to defend its patent only on the basis of requests submitted already before the department of first instance. Therefore, the decision G 9/91 confirms implicitly also that an appeal based only on new requests can be admissible.
[1.3] As regards the [opponents’] submissions that during the opposition proceedings the [patent proprietor] had not replied to the objections raised by the opponents and by the OD and had not tried to overcome these objections by filing amended claims, the Board remarks that there are no requirements in the EPC which oblige the patent proprietor to submit any argument during opposition proceedings. Therefore, the patent proprietor’s behaviour during opposition proceedings cannot have any bearing on the admissibility of its appeal which is governed only by A 108 and R 99 (see e.g. T 457/89 [1]).
[1.4] Moreover, the fact that the [patent proprietor] had requested in its notice of appeal the maintenance of the patent as granted and that the grounds of appeal were based instead only on amended sets of claims has also no bearing on the admissibility of the appeal since, according to R 99(1)(b) and (c), the notice of appeal has to indicate which decision is impugned and a request defining the subject of the appeal, i.e. the extent to which amendment or cancellation of the decision is requested, whilst the appeal’s requests for the maintenance of the patent in a particular form have to be defined according to R 99(2) in the grounds of appeal (see T 358/08 [catchwords 1 and 2]).
This has been complied with in the present case since the notice of appeal specified the request to set aside the decision under appeal whilst the grounds of appeal clarified in which form the patent was requested to be maintained.
[1.5] According to the [opponents] it was decided in T 39/05 [1.1.2] that an appeal should not be admissible if the grounds of appeal relate to new requests which do not originate from objections which became known for the first time in the reasoning of the decision under appeal. Therefore, according to the [opponents], this decision would apply to the present case in which the objection of lack of novelty over document D20b which had led to the revocation of the patent was already known to the patent proprietor at least from the summons to the OPs before the department of first instance.
The Board remarks that the reasoning for the inadmissibility of the appeal in case T 39/05 consists of two distinct parts.
The first part of the decision, including said point [1.1.2], concerns the entitlement of the patent proprietor to file an appeal as governed by A 107; in particular, it is specified in the decision that the Boards of Appeal of the EPO had already found admissible appeals based only on new requests (see point [1.1.1] which also refers to T 162/97 discussed above); moreover, it is stated that the appeal in the specific case could have been considered to be possibly admissible if the new requests would have originated from objections become known to the patent proprietor for the first time in the reasoning of the decision under appeal (point 1.1.2).
However, the Board notes that it is clear from the last full paragraph of point [1.1.2] that this decision concerns in particular the filing of requests based on claims having a different category from that of the claims discussed before the department of first instance; moreover, since it could not be deduced from these new requests which objections raised before the department of first instance by the opponents would be overcome, such new requests could not be considered to have been filed with the intention to overcome the objections upon which the decision under appeal was based. Therefore, case T 39/05 concerns a legal situation different from the present one in which the requests submitted during appeal are in the same category as the only request pending before the department of first instance and are to be considered a reply to the novelty objection on which the decision is based.
The Board thus finds that at least this part of the decision T 39/05, concerning a different legal situation, is not applicable to the present case.
The second part of this decision, relating to the requirements of A 108(3), third sentence and therefore also to those of R 99(2), states the necessity of filing a statement of the grounds of appeal according to the Implementing Regulations and the necessity of the new requests to contain a causal link with the decision under appeal (see points [1.2.1] and [1.2.2]), requirements which have been complied with in the present case as explained in point [1.2] above.
Therefore, also this decision confirms the finding of the Board that the present appeal complies with all the requirements of A 108 and R 99 and is admissible.
[1.6] Under Article 112(1) EPC it is within the discretion of the Boards of Appeal to refer a case to the EBA if this appears necessary for ensuring uniform application of the law or a point of law of fundamental importance arises. Since in the present case the Board’s decision on the admissibility of the appeal is not contrary to T 39/05, as explained above, and thus a point of law of fundamental importance does not arise, there is no necessity to refer [the opponent’s] question to the EBA for ensuring uniform application of the law. [The opponent’s] request to refer to the EBA thus is to be refused.
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