Friday, 30 December 2011

T 193/07 – Purely Hypothetical

Both the patent proprietor and opponent 2 (!) filed an appeal against the decision of the Opposition Division (OD) revoking the patent under consideration.

In what follows the Board discussed the admissibility of the opponent’s appeal:

[2.1] According to A 107 “any party to the proceedings adversely affected by a decision may appeal”.

[2.1.1] The first instance opposition proceedings led to the revocation of the patent in its entirety as requested by opponent 2 […]. The order of the decision of the OD thus fully complies with the request of opponent 2.

[2.1.2] A party is only adversely affected if the order of the appealed decision does not comply with its request. Hence, in the present case, [opponent 2] is not adversely affected by the decision of the OD.

[2.2] [Opponent 2] argued that A 107 did not expressly further specify the meaning of “adversely affected”. In a case like the present one, with no possibility of continuing appeal proceedings initiated by an appeal of the patent proprietor if the latter withdraws its appeal, procedural situations could occur which could adversely affect the respondent-opponent in parallel or related national infringement or nullity proceedings.

[2.2.1] However, the board observes that [opponent 2] has not identified any specific reasons for which it considered itself to be adversely affected on the day it filed its notice of appeal. [Opponent 2] merely presented purely hypothetical considerations concerning potentially disadvantageous situations that may occur (in the future) in related national litigation proceedings. These considerations have no legal relevance under A 107, first sentence.

[2.2.2] In this connection, the board also observes that the possibility of an anticipatory cross-appeal is not foreseen by the EPC (see e.g. decision T 854/02 [2.2]). A respondent-opponent which is not adversely affected by a decision revoking the patent is thus not entitled to file an appeal for the sake of acquiring an independent appellant status instead of the status of a respondent (party as of right).

[2.3] Moreover, the board’s conclusion in the present case is in accordance with the established jurisprudence of the boards of appeal, according to which in cases where the order of the decision of the OD is the revocation of the patent, an opponent who requested revocation of the patent in its entirety is not “adversely affected by” said decision within the meaning of A 107, first sentence, irrespective of the reasons given in the decision. Reference can e.g. be made to decisions T 854/02 [3.1-2], T 981/01 [5-6], T 1147/01 [2], T 1341/04 [1.2(i),1.3] and T 473/98 [2.2-8]. Whether or not the OD, in its decision to revoke the patent on the ground of lack of inventive step, dealt with all the novelty objections raised by opponent 2 is thus not relevant in the assessment of the admissibility of the appeal of [opponent 2]. The board sees no reason for deviating from the established case law in the present case.

[2.4] Summarising, in the board’s judgement, [opponent 2] was not entitled to appeal against the decision of the OD, since it was not “adversely affected by” said decision within the meaning of Article 107 EPC.

[2.5] Therefore, the appeal of [opponent 2] is not admissible.

[2.6] Consequently, the board considered the submissions of [opponent 2] from the point of view of its status as a respondent to the appeal of the patent proprietor.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.