Tuesday, 8 February 2011

T 689/09 – Not Subject To Change

The present decision deals with an appeal filed by a patent proprietor whose patent had been revoked by the Opposition Division (OD).

The notice of appeal was worded as follows:

The opponent challenged the admissibility of the appeal.

[1.1] According to R 99(1)(c) EPC 2000, which applies in the present case, the notice of appeal shall contain “a request defining the subject of the appeal” (emphasis added by the Board).

This requirement pertains to one of the main functions of the notice of appeal in defining an appellant’s initial request, see the explanatory remarks for R 99 in the Special Edition 5 of the Official Journal 2007: “Revision of the European Patent Convention (EPC 2000), Synoptic presentation EPC 1973/2000 - Part II: The Implementing Regulations”:
“[the] requirement of R 99(1)(c) EPC 2000 takes into account that the appellant’s initial request - according to the case law of the Enlarged Board of Appeal (see G 9/92, G 4/93 and G 1/99) - defines the subject of the appeal and thereby the framework of appeal proceedings.”
[1.2] R 99(1)(c) EPC 2000 revises corresponding R 64(b) EPC 1973, according to which the notice was required to include “a statement identifying ... the extent to which amendment or cancellation of the decision is requested” (emphasis added).

The above-mentioned explanatory remarks state that that requirement has been moved to R 99(2) EPC 2000 which defines the statutory contents of the statement of the grounds of appeal. This revision makes allowance, as expressly stated in the explanatory remarks, for the case
“where the appellant is the patent proprietor [and] the amended claims are ... filed with the statement of the grounds for appeal ... [I]t is only then that the precise nature of the requested amendment of the decision impugned becomes apparent”.
That situation applies to the present case as is clear from the opening paragraph of the notice of appeal: It is the proprietor who gives notice against the decision to revoke his patent […].

In view of the explanatory remarks to R 99(1)(c) and (2), the notice of appeal need not indicate the precise nature of the amendment of the decision to be included in the statement of the grounds of the appeal, i.e. it is sufficient that the claims now being pursued by the appellant proprietor are only put forward in the statement of the grounds of appeal, as indisputably happened in the present case as well. Insofar the revised rules confirm the existing practice.

[1.3] What then does R 99(1)(c) require the notice of appeal to state in the present case?

The explanatory remarks give the following general guidance (in addition to that cited above […]):
“As a rule, the notice of appeal should already clarify whether the decision under appeal is contested as a whole or only partially, and define the extent of the issues raised in the appeal proceedings”.
[1.4] The interpretation of “subject of the appeal” as used in R 99(1)(c) has been addressed by previous decisions.

Decision T 1108/08 [1], without detailed reasoning, simply equates it with the requirement of identifying the extent to which cancellation of the [impugned] decision is requested […]. Given the wording of R 99(2) referring to the “extent to which [the impugned decision] is to be amended”, it has to be presumed that the deciding Board of T 1108/08 did perceive a difference between the “amendment” and the “cancellation” of a decision and realised that only the “extent of the amendment” requirement had been moved from R 64(b) EPC 1973 to R 99(2). It may have inferred from the explanatory notes […] that the “subject of the appeal” still encompasses the “extent of cancellation” requirement. This latter conjecture is somewhat tentative as the explanatory notes - apart from not being legal provisions themselves - use a different formulation, “extent of issues”, which may refer to a separate, additional or alternative, requirement, but could be synonymous with the “whole or partial” contesting of the impugned decision.

[1.5] The question is further analysed in great detail by decision T 358/08 […]. There the deciding Board established that the Implementing Regulations themselves or the supplementary means of interpretation, such as the “Travaux Préparatoires” to R 99 provides little information as to the exact meaning of the term “subject of the appeal”, apart from the fact that no significant changes were intended by the legislator to the existing practice. On the contrary, the changes merely reflect and thus confirm the development of the case law, in particular the possibility to defer the filing of new claims forming the basis of the appeal to the grounds of appeal (see points [1-5], in particular point [5]:
“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.”

[1.6] This latter statement of the deciding Board of T 358/08, taken together with its finding that even the provisions of the previous R 64 EPC 1973 concerning the required extent of cancellation/amendment were “somewhat toothless” (see point [2.4]) results in the finding that an appeal statement worded
“we hereby appeal against the decision of the OD ... we ask that the decision … be set aside and the patent maintained” is to be treated as a request defining “the subject of the appeal”, see point [5.1].

Otherwise, the deciding Board of T 358/08 declined to give a positive definition, stating that “it is not necessary for the Board to say precisely what it does mean”, see point [4.12].

Nevertheless, the Board found that a possible interpretation of R 99(1)(c) and (2) for the purposes of a practicable system should be made with an eye to the usual forms of orders made in appeal decisions, in the sense that the notice of appeal need only imply the first part of the order as desired by the Appellant, namely the setting aside of the impugned decision. The next part of the order that, in the Appellant’s view, should replace the order of the first instance (here the form in which the patent is to be maintained) may then appear in the grounds at the latest.

[1.7] The preparatory materials point to certain decisions of the Enlarged Board as explanation for the requirement of identifying the “subject of the appeal”. These decisions base their ratio decidendi on the generally recognised procedural principle of party disposition (Antragsgrundsatz, ne ultra petita) governing the appeal proceedings under the EPC, see G 9/92[1]. Taking the explanatory notes to the revised rules at their face value, it appears legitimate to consider R 99(1)(c) to be an expression of this principle. As such, it is not a requirement of form but of substance. It does not matter in what form the subject of the appeal is identified, as long as it is clear. The meaning of this principle is that the appeal can not extend to issues that the appellant himself did not wish to be a subject of the appeal, nor can the extent of the rights be decided beyond the extent requested.

On this basis, this Board interprets the “subject of the appeal” (Beschwerdegegenstand, l’objet du recours) to pertain to the substantive legal effects in general that are sought to be eliminated or achieved through the appeal (and essentially corresponding to the legal effects achieved by the impugned decision), keeping in mind that the “extent” of these legal effects need only be specified later.

Thus the notice of appeal must assist in identifying those legal issues which may be treated and decided on during the appeal proceedings. In the Board’s view it suffices if the Board and any other party can deduce in some way from the information in the notice of appeal what general legal effects are sought to be achieved by the appeal, including further by implication, if necessary, those legal effects which are necessary for achieving the desired legal effects.

[1.8] This interpretation is also consistent with the possibility that an impugned decision is only partially contested or the extent of the issues raised in the appeal is limited when compared to the legal effects of the impugned decision, for example where the decision has several independent legal effects, see decisions J 27/86 and T 420/03.

The board notes that it is also aware of case law, according to which the distinction between different legal effects of a decision also falls under the “extent to which the impugned decision is to be amended” pursuant to R 99(2), see T 1382/08 [8]. However, this approach leaves the notion of the “subject of the appeal” even more diffuse and elusive.

[1.9] The general legal effect of the decision under appeal is to revoke the patent. The effect of revocation can be inferred from A 68: the application or patent is deemed not to have had - from the outset, ab initio - any of the rights conferred under A 64 and 67 (to the extent it has been revoked). The Board notes that even though A 68 leaves room for the interpretation that the legal term “revocation” can also mean a partial loss of rights, i.e. encompass the maintenance in an amended form, in the overwhelming majority of the patent profession “revocation” is used exclusively to indicate full revocation, i.e. a complete loss of substantive patent rights. Thus the words “decision to revoke the patent” in the notice of appeal is also understood in this sense by the Board.

[1.10] As noted above, the proprietor does not need to indicate in the notice of appeal the extent to which the impugned decision is to be amended, since this “extent” is to be defined through the scope of the claims being pursued on appeal. Thus the “subject” of the appeal need only relate to a more general legal effect than the specific legal effects of a grant of a patent, being specific in the sense that the specific scope of protection - i.e. its “extent” in the sense of R 99(2) - is defined by the claims.

This leaves us with the notion that the subject of an appeal may be the general legal effect of grant, or as its legal counterpart, a revocation. However, staying on this general level of legal effects, the only conceivable general relief sought against the single and indivisible legal effect of the revocation is that the deemed loss of rights does not take effect, i.e. all the substantive rights residing in the patent as granted do persist as if nothing had happened.

From this follows that a statement of the proprietor that he wishes rights to persist, that is cancellation of the decision and its legal effect, should suffice.

[1.11] Nor need the proprietor expressly state that he seeks cancellation. This is implied in an appeal, given that cancellation is the only possible relief available to a proprietor appealing against a decision to revoke.

Accordingly, in the present case, the mere statement that the “decision ... revoking ...the patent” is appealed is enough to make clear to the Board and any other party that the appeal concerns at least the cancellation of the revocation. This is clear from the notice of appeal, even without perusing the decision under appeal or other documents of the file. For this reason the Board concludes that the notice of appeal meets the requirements of R 99(1)(c) EPC 2000.

See also T 407/02 [1.1], deciding that in case of revocation the declaration of appealing the impugned decision must be treated as a request for the cancellation of the decision in its entirety (on the basis of R 64(b) EPC 1973).

[1.12] In light of the above, the Board is satisfied that the subject of the appeal has been properly identified, so that the appeal goes beyond an empty statement of appeal against some undefined legal effect.

Insofar the Board need not address the possible consequences of the wording of R 99 on existing case law, nor the question whether it is permissible to identify the subject of the appeal for the purposes of R 101(1) in light of the decision under appeal.

That said, the Board concurs with the findings of T 358/08, i.e. that it is not apparent that the legislator would have intended any significant change to the developed procedural requirements of appeal. Though the Board in principle agrees with the [opponent] that in theory, a more strict practice could also be justified by the wording of the applicable rules, it does not see the need to depart from the established, admittedly appellant-friendly approach with respect to the admissibility of the appeals.

[1.13] As all other requirements of A 108 and R 99 are met the Board finds that the appeal is admissible.

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