This is a revocation appeal.
Rather than dealing with the
decision as such, the patent proprietor chose to file a statement of grounds consisting
of several requests and an explanation why they were thought to be novel and
inventive.
The Board was not satisfied:
The statement of grounds of appeal
The legal framework
[2.1.1] For an appeal to be admissible, it has
to comply with the requirements of A 108, R 99(2) and R 101(1).
A 108, third sentence, requires that:
“Within four months of notification of the decision, a statement setting out the grounds of appeal shall be filed in accordance with the Implementing Regulations.”
R 99(2) provides that
“In the statement of grounds of appeal the appellants 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”.
R 101(1) provides that
“If the appeal does not comply with A 106 to A 108, R 97 or R 99, paragraph 1(b) or (c) or paragraph 2, the Board of Appeal shall reject it as inadmissible”.
[2.1.2] As to the content of the statement of
grounds, Article 12(2) RPBA requires that:
“The statement of grounds of appeal and the reply shall contain a party’s complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld and should specify expressly all the facts, arguments and evidence relied on.”
The case law
[2.2.1] The case law of the Boards of Appeal
has consistently considered it to be incumbent on an appellant, in order to
meet the admissibility requirements, to explain in detail why it considers the
decision under appeal to be wrong, be it entirely or in part, thus imposing a
direct and clear link between the contested decision and the grounds for
appeal.
[2.2.2] In decisions G 9/91 and G 10/91 [18] the
Enlarged Board of Appeal (EBA) held that “The purpose of the appeal procedure
is mainly to give the losing party the possibility of challenging the decision
of the Opposition Division on its merits”.
In the French version: “… de
contester le bien-fondé de la décision.”
In the German version: “ … die Entscheidung
sachlich anzufechten.”
It is thus clear that the appeal
proceedings aim at contesting a decision.
[2.2.3] In decision G 1/99 [6.1] the EBA
further pointed out that:
“Indeed, issues outside the subject-matter of the decision under appeal are not part of the appeal.” and that “… within the limits of what in the subject-matter of the decision under appeal adversely affects it, it is the appellant who in the notice of appeal determines the extent to which amendment or cancellation of the decision under appeal is requested.” (emphasis added by the board).
[2.2.4] It follows
from this that the appeal proceedings are confined to the subject-matter of the
first instance proceedings and therefore that the statement of grounds of
appeal should at least discuss this subject-matter.
The need for the above-mentioned link (see
point [2.2.1]) is thus not only confirmed but also clarified in terms of its
closeness.
[2.2.5] The case law further defines the
content of the statement of grounds of appeal in such a way that it must
specify the legal or factual reasons why the impugned decision should be set
aside. The arguments must be clearly and concisely presented to enable the
board (and the other party) to understand immediately why the decision is
alleged to be incorrect, and on which facts the appellant bases its arguments,
without first having to make investigations on their own (see in particular the
decisions T 220/83, T 213/85, T 145/88, T 169/89 and T 1581/08.
[2.2.6] Moreover, it is also established case
law that grounds sufficient for the admissibility of an appeal must be analysed
in detail vis-à-vis the main reasons given for the contested decision (see T 213/85; T 169/89; T 45/92 and T 570/07).
[2.3] The present case in view of the cited
case law
[2.3.1] In the
present case, the appellants submitted on 27 December 2011 a document entitled “Statement
of Grounds of Appeal”.
It can however be clearly seen
that these submissions do not contain any reference to the impugned decision,
let alone any explanation as to why this decision should be wrong and thus be
set aside.
[2.3.2] The board understands from the content
of said statement that the appellants do not contest the finding of the Opposition
Division (OD) as to:
- the lack of novelty of the main request over D1d;
- the lack of novelty of the third auxiliary request over D4;
- the lack of compliance with R 80 of the second and fourth auxiliary requests;
- the reasons for the late-filing of the first auxiliary request.
[2.3.3] Thus, none
of the main grounds for revocation of the patent presented in the impugned
decision was addressed in the statement of grounds of appeal.
Therefore, by applying the above
cited case law, it should be concluded that the appeal has to be rejected as
inadmissible for lack of compliance with the above-mentioned provisions of the
EPC.
Newly filed requests
[2.4.1] The
question arises whether newly filed requests can be seen as implicit
grounds of appeal, or in other words, whether there is a link between the
decision and the grounds.
[2.4.2] A statement of grounds of appeal
supported by amended claims may define, at least implicitly, the extent to
which the appellant wishes the decision under appeal to be set aside.
The issue however is whether the grounds are
understandable and sufficiently linked to the contested decision in
order to form an admissible appeal.
[2.4.3] The board
is aware of a substantial body of case law where the sufficiency of the grounds
was examined for the question of admissibility in relation to the filing of new
claims. There are several decisions in which a relatively lenient position was
adopted towards the appellants, in the sense that the appeals were deemed to be
admissible if the competent board was able to infer from the particulars
of the case the presumed intentions of the appellant and the probable reasons
underlying its actions, see in particular decisions T 162/97 [1.1.2]; T 574/91
[1.2]; T 729/90 [1.2]; T 563/91 [1.2].
In an even broader interpretation, it was held
that an appeal was sufficiently substantiated and that the requirements of A
108, third sentence were satisfied, even though the board did not state any
specific reasons why the contested decision was wrong. The reasoning was that
- there was a change in the subject of the proceedings due to the filing of new claims together with the statement of grounds; and that
- the statement of grounds set out in detail why the raised grounds for opposition did not prejudice the maintenance of the patent as amended on the basis of these new claims (cf. in particular T 717/01 [2]; T 934/02 [2], referring to J xx/87 [1.4] and T 105/87).
[2.4.4] In the
board’s view, it is certainly arguable that appeals should be decided primarily
on their substance, and that parties should be given the possibility to argue
their case without overly strict formal requirements. However, procedural
principles have to be considered.
The principle of free disposition
[2.5.1] Even
assuming that laborious sequences of exercises would tell the reader what the
appellant’s case against the decision might be, such conjecture is exactly what
the statement of appeal is designed to prevent: the purpose of the statement of
grounds, together with the notice of appeal is to define the scope of the
appeal. This definition lies within the discretion of the appellants as a part
of the principle of free disposition.
[2.5.2] Without prejudice to provisions of A
114, which are of limited application in opposition proceedings, the board of
appeal has the duty to assess whether the appeal is well-founded within the
frame of the case as presented by the appellants but it cannot guess what the
arguments are, let alone, provide arguments in lieu of the appellants.
The power of the board of appeal
[2.6.1] Conversely,
the principle of free disposition does not extend to such a point that it
should allow the appellants to build a new case, disconnected from the case as
it stood during the first instance proceedings, so as to render the decision
under appeal purposeless. The EPC’s provisions do not give the appellants
the power to set aside the decision under appeal of its own volition, which
would obviously be the case if it had the opportunity to modify its requests
beyond the subject-matter of the first instance proceedings. In other words,
the power conferred by A 21(1) to the boards of appeal to review decisions
shall not be transferred to the appellants.
In the same way, decision T 240/04 [16.3]
already stated as regards new claims not sufficiently connected to the
subject-matter of the one previously filed:
“In einer solchen Situation den neuen Antrag zuzulassen würde einem Patentinhaber praktisch die Möglichkeit geben, nach Belieben eine Zurückverweisung an die Erstinstanz zu erzwingen. Dies würde den Einsprechenden benachteiligen und wäre auch nicht verfahrensökonomisch.“
Although the present issue relates to the
admissibility of the appeal and not to the admissibility of new requests, the
obligation to contest the decision of the first instance remains. Whether the
appeal is only supported by new sets of claims or the decision under review has
not been contested in the appeal proceedings, the end effect is the same: the
board and the respondent in the first place are facing a new case which leads
to the issue of remittal, in order to ensure a double degree of jurisdiction.
[2.6.2] In regard
of all these considerations above, the present board is of the opinion that a
direct link must be maintained between the decision under appeal and the
statement of grounds of appeal.
The appellant cannot escape its
obligation to explain why it does not agree with the decision, be it only in
part. The appellant is not correct in its view, because the very nature of
appeal proceedings is and remains the contestation of a decision.
This does not mean that the
appellant shall be denied the right to file amended claims, but it must provide
arguments in order to explain what is/are the issue(s) in the decision it
considers to be erroneous and provide arguments and evidence to support its
view. The amendments made to the claims in order to remove the grounds of the
decision under appeal constitute an implicit acceptance of the decision and
therefore cannot be regarded as grounds for appeal in the sense of A 108,
second sentence EPC.
The requests of the present case
[2.7.1] In the present case, as the appellant
confirmed in its latest submissions, the reasons for filing a modified main
request and five auxiliary requests were based on the assumption that the
decision of the OD was right in its findings that the opposed patent as granted
and as modified in the course of first instance proceedings was not novel over
D1 and D4, or as regards auxiliary requests 1, 2 and 4, that these requests
were not formally admissible.
The aim of the present appeal is thus to gain
an opportunity to get the patent maintained in amended form through new claims
making the revoked patent compliant with the reasons given by the OD, or
through the introduction of new features thus forming different embodiments of
the alleged invention which were never discussed before regarding their
compliance with the requirements of the EPC.
[2.7.2] Accordingly, even when considering the
issue of admissibility in the light of the less strict case law, the board
considers that the statement of grounds of appeal in the present case does not
comply with the above mentioned legal provisions of the EPC.
[2.7.3] Consequently,
the appeal must be rejected as inadmissible.
Should you wish to download the
whole decision, just click here.
The file wrapper can be found here.
11 comments:
Oh, how I do dislike boards which follow such reasoning. More often than not, the new requests are filed by a new representative, rather than the original attorney who prosecuted the application. Having reviewed the case, the new rep. is firmly of the opinion that new claims are required. What does he/she do? Fight the old, hopeless requests, perhaps with some new ones stuck on or submit only new requests to cut down on the number of issues?
From a legal point of view it is the decision which is being appealed not the reasoning. If the decision was to allow the opposition and revoke the patent, the new requests are directly aimed at pesuading the board to overturn the decision, i.e. why it was wrong.
EdT
If new claims were required, they could, and, in view of Art. 12(4) RPBA, probably SHOULD, have been filed before the OD.
ExaMinus, I think EdT is simply pointing out that patent owners switch to a different EPO representative only after they have read the cold logic of the written Decision of the Opposition Division. Throughout the history of the case, up to that point of dawning horror, the owner and the initial representative have convinced themselves that their position is unassailable. Then reality kicks in, but only on receipt of the OD's written reasoning. What then? New representation for the Appeal. Does the Board give the new representative a chance to save the case for its owner? I would hope so.
EdT, how would you know whether a decision is right or wrong when you do not have any reasons for the decisions.
And the new rep should be able to find some "prima facie" arguments as to why a decision/reasoning was not correct ... just pro forma to have a substantiated appeal - such arguments don't need to be followed in the further proceedings, but instead the new claims could be offered (and with luck be admitted into the procedure).
Anyway, the BoA will tell that the appeal is not a continuation of the first instance proceedings but a review of its decision and reasoning. A new set of claims may overcome an objection but it does not render a decision on a prior request right or wrong - therefore a mere new set of claims cannot suffice to challenge the correctness of a decision (and consequently, cannot suffice to substantiate an appeal).
For me, the crux issue ought to be whether to admit with the substantiation of the Appeal a fresh set of claims on which, prima facie, the patent can be upheld. Or will the Board shut that set out with the pat dismissal that you could have presented that set to the OD, but you didn't, and it's too late to present them for the first time now.
Whether or not Appellant goes through the charade of disputing the unassailable logic of the OD in its written Decision strikes me as not the issue on which to decide the case. That would be elevating form over substance wouldn't it?
What the relevant party and its Representative need to get into their heads is that there is no right to present anything new in the Appeal with regard to what was presented in the Opposition. The Appeal is there to confirm that the Opposition Division did their job properly. It is a legal safeguard, and a check-and-balance. If the OD did not, then the Board has to decide how to resolve the defective decision, whether to reverse the decision, whether to consider other factors not mentioned in the Decision, or to remit the case for further consideration by the first instance decision. It is at that point that new Requests or evidence might come into play. However, if the Decision was correct on the facts and argument presented at first instance, then there is no requirement for the Board to do anything further except confirm the Decision as being correct on the law and facts on which it is based.
The Appeal serves to safeguard the rights of parties against errors of the EPO, including the right to take and maintain a defective position, and the right not to present reasonable fallback positions as auxiliary requests. The Appeal is not there to compensate for the party or his Representative not being diligent, sensible or cautious. Running duff arguments, presenting defective requests or leading shaky evidence is not an error of the EPO, and therefore is not against what the Board of Appeal is there to safeguard.
Who, then protects the parties against foolish behaviour or poor advice/representation? In the former, nothing save Article 133(2). In the latter, the EQEs, EPI, national regulators, and the law of professional negligence, not DG3. Each Representative advises and acts in the name of each party, but each act, each argument, each piece of evidence, each request is legally that of the party, not the representative. Hence, "having a poor Representative" is no grounds for a valid appeal. Rather, it is grounds for a complaint against the Representative, rather than against the EPO.
Three cheers for the text of that last Anonymous. I cannot remember ever having had administered to me a bigger dose of common sense. I imagine you to be in private life, towards EPO representatives and other ordinary mortals a very kind and courteous man but, when at work, chairing oral proceedings in Munich, an absolute scourge to us poor reps. on the road.
Gentle readers, heed his words and quake!
Oliver, for the future, we are relying on you!
The problem arises due to a lack of a definition of the nature of an appeal in the EPC. While national legislation will provide for an appeal being a review de novo or only only relating to questions on a matter of law, there is no such provision in the EPC. As a result, the Boards are left to interpret the RPBA as set by the Administrative Council helped by the G decisions such that Boards may decide to dismiss cases on formality grounds if they see fit rather than have to reach a decision on the correctness of the arguments presented.
Dear MaxDrei,
From your posts, I do not think you're a "poor rep.". But there is nothing wrong with the hefty and healthy dose of common sense provided by Anonymous 10:09.
I see your point that a second representative would like to have a chance to make his points, and possibly fix what has been messed up by a first representative. But changing representative should not give a party any procedural advantage, and certainly does not grant any right to be heard anew.
Being nice to the ex-patentee here would be harsh to the opponent (even if he owed his victory to poor defense from the patentee than to a brillant attack of his).
Dura lex sed lex, as they say in an almost official language.
I fully agree that a voluntary change in representative cannot create new rights for the applicant. The applicant is free to choose his representative, but he has to bear the consequences of his choice. The applicant acts through his representative, so any screw up by the representative counts as a screw up by the applicant. The EPC system of law is not at all unique in this.
However, I do find it surprising that the Board seems to say that if the decision of the OD cannot be shown to be erroneous, the appeal cannot succeed. In principle, I have not so much against the idea that the Board should only decide whether the decision (and the procedure leading up to it) was correct. But the practice of most Boards is quite different. How is the applicant to know the policy of the Board that happens to treat his appeal?
To that last anonymous:
These matters move slowly. For example, it took about 30 years for the national courts of Germany to "get" novelty under the EPC. That is real quick though, in comparison with the time it will take for the various DG3 Board Chairmen get their act together, on the question what is DG3's job and what is not. I daresay VP-DG3 has tried often enough, to get them to agree, but all in vain, thus far. They all have a righteous mind, and none of them defers to anybody.
But that's good, isn't it?
Post a Comment