Monday, 2 September 2013

T 1795/10 – Over-Formalistic

This revocation appeal contains some interesting passages one of which concerns the admissibility of the opposition:

[1.1] Mr K. filed the opposition under the letter head of his firm and signed as patent attorney. The [patent proprietor] claimed that it was to be assumed that Mr K. was acting on behalf of an undisclosed client. The name of the opponent, however, was indispensable for a valid opposition.

The [patent proprietor] further stressed that Mr K. had failed to indicate his nationality and his place of residence, his place of business not being sufficient under R 76(2)(a) and R 41(2)(c).

[1.2] In decision G 3/97, the Enlarged Board of Appeal stated:
“An opposition is not inadmissible purely because the person named as opponent according to R 55(a) [EPC 1973 = Rule 76(2)(a) EPC 2000] is acting on behalf of a third party. Such an opposition is, however, inadmissible if the involvement of the opponent is to be regarded as circumventing the law by abuse of process. []. However, a circumvention of the law by abuse of process does not arise purely because:
  • a professional representative is acting in his own name on behalf of a client;
  • an opponent with either a residence or principal place of business in one of the EPC contracting states is acting on behalf of a third party who does not meet this requirement.”
Thus, the mere fact that the opposition was filed by a patent attorney, even if he might be representing a third party, does not necessarily mean that there has been a circumvention of the law by abuse of process which might render the opposition inadmissible.

[1.3] Following a failure to comply with R 76(2)(a) and R 41(2)(c), R 77(2) gives the opposition division (OD)  the authority to invite the opponent to remedy the deficiencies and – if the opponent fails to do so within a specified time period – to reject the opposition as inadmissible.

However, since the OD issued no such invitation there is no basis for holding the opposition inadmissible. R 77(1) (rejection without invitation to remedy the deficiencies) applies only to non-compliance with the provisions of A 99(1) or R 76(2)(c).

Therefore, even if there was a deficiency under R 76(2)(a) regarding the opponent’s identity (nationality and place of residence), this would not render the opposition inadmissible.

The opponent also objected that the amendments did not comply with R 80 (according to which the amendments have to be occasioned by a ground for opposition under A 100). The Board disagreed:

[3.2] In the board’s view, the amendments to claim 1 satisfy the requirements of R 80, because the amendment consisting of the insertion of the sentence “the lithium-metal composite oxide is synthesized from in dehumidified air” was filed with the aim of overcoming the OD’s conclusions as to lack of novelty. Thus, this particular amendment was occasioned by a ground for opposition under A 100(a), as required by R 80.

That the [patent proprietor] also took the opportunity to delete the word “having” from the sentence “having a Karl Fischer moisture content of 0.2 wt % or less when heated to 180°C” cannot be seen as an infringement to R 80 because claim 1 already includes an amendment occasioned by a ground for opposition. Of course, when amending its claims, the proprietor should not use this as an opportunity to tidy them up, but it would be over-formalistic to reject a claim - with the consequence of the revocation of the patent - simply because a further minor and/or linguistic amendment was carried out.

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

The file wrapper can be found here.