Both the patent proprietor and the opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form, on the basis of the second auxiliary request on file.
In its notice of appeal, the patent proprietor requested maintenance of the patent on the basis of what had been the first auxiliary request before the OD. In its statement of grounds of appeal, the patent proprietor then requested as main request that the opposition be rejected.
Did the Board admit this request?
*** Translation of the German original ***
[1] The wording of the provision corresponding to former R 64 EPC 1973 and present R 99 was modified when the EPC 2000 entered into force. In particular, [the legislator] inserted the requirement that the notice of appeal had to contain a request defining the subject of the appeal into R 99(1)(c). [He] also added to paragraph 2 that the statement of grounds of appeal had to indicate the extent to which the impugned decision was to be amended.
[1.1] In the present case the patent proprietor, when filing the notice of appeal, requested that the decision be set aside and that the patent be maintained according to the first auxiliary request. The statement of grounds of appeal explained why the reason should be set aside and also contained a request extending beyond [the original request], according to which the opposition should be rejected, i.e. the patent be maintained as granted.
[1.2] The opponent was of the opinion that this [course of action] had limited the subject of the appeal to the first auxiliary request and that, as a consequence, the main request was not part of the appeal proceedings. It justified this opinion by invoking the amended wording of R 99 according to which the subject of the appeal was to be defined in the notice of appeal. The Board cannot endorse this opinion.
[1.3] According to the case law of the Boards of appeal, the modified wording of R 99 has not resulted in a substantive revision (inhaltliche Neuregelung) of the requirements for the notice of appeal and the statement of grounds of appeal (T 358/08 analysing in detail the travaux préparatoires, T 689/09, T 9/08).
This means that the requirements of R 99(1)(c) are satisfied when the notice of appeal requests that the impugned decision be set aside. The extent of the request (Änderungsbegehren), i.e. in which version the patent proprietor filing the appeal wants the patent to be maintained, is only to be indicated in the statement of grounds of appeal under R 99(2) (see in particular T 358/08 [5]).
[1.4] What exactly is the subject of the appeal always has to be seen in the context of the subject of the impugned decision. If a decision has several subjects then it is possible that the appellant does not wish to contest all of these subjects. Therefore, it can file an appeal against the decision in its entirety or against parts of the decision only. This corresponds to the principle of party disposition (Antragsgrundsatz; G 1/99 [6.2]). However, these parts have to be independent of each other. In this context the initial (einleitend) request of the appellant determines the subject of the appeal and thereby fixes the framework of the appeal proceedings (G 4/93 [1]). Thus the subject of the appeal proceedings is to be determined on the basis of the declarations in the notice of appeal.
[1.5] In the notice of appeal [the patent proprietor] first requested to set aside the interlocutory decision. The purpose of this declaration is to invalidate the impugned decision insofar as it adversely affects [the appellant]. The operative part (Tenor) of the impugned decision was that, taking into account the amendments, based on the second auxiliary request, the patent and the invention that it discloses satisfy the requirements of the Convention. The reasons for the decision explain that A 100(b) was in conflict with claim 1 of the main request and that claim 1 of the first auxiliary request violated A 123(2). These statements are not independent subjects of the decision. Rather, the subject of the decision is the patent, as can also be seen from the operative part [of the decision].
[1.6] According to decision T 689/09, which deals with R 99(1)(c), the declaration “hereby we file an appeal” defines the subject of the appeal to the extent that the legal effects resulting from the decision are to be cancelled. The question as to how the decision is to be modified, however, is left to the statement of grounds of appeal […].
[1.7] In decision T 358/08 the Board came to the same conclusion. It further explained that the sole purpose of the requirement of R 99(1)(c) to define the subject of the appeal was to clarify whether the decision was contested in its entirety or only in part (point [5] of the reasons).
[1.8] However, a decision can only be contested in part if there are parts of the decision that can be contested independently. For instance, this was the case in decision T 420/03 where the OD had revoked the patent and also had ordered apportionment of costs under A 104. The Board of appeal explained that the decision concerned two legally distinct subjects. If the appellant declared in its notice of appeal “hereby we file an appeal” and then only referred to the first part concerning the revocation, then the second part, i.e. apportionment of costs, was not encompassed by the appeal (point [1.2] of the decision).
[1.9] In the present case there are no such legally distinct parts but only a unitary decision on the maintenance of the patent. [The patent proprietor] filed an appeal against this decision. This defines the subject of the appeal. To which extent [the appellant] wishes the impugned decision to be modified, i.e. in which version the patent is to be maintained, only has to be stated in the statement of grounds of appeal. If, however, this indication is already given in the notice of appeal, this only constitutes an anticipation of the statement of grounds that has no limiting effect (T 89/85 [2]).
[1.10] Consequently the request contained in the notice of appeal, i.e. to maintain the patent on the basis of the first auxiliary request, did not limit the patent proprietor and did not hinder [the appellant to file] a more far-reaching request together with the statement of grounds of appeal.
[1.11] As a consequence, the main request is part of the proceedings.
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