Tuesday, December 09, 2014 T 2157/10 - Not adversely affected, but it hurts

The patent proprietor appealed against the interlocutory decision of the opposition division to maintain the patent in amended form and requested that the European patent be main­tained as granted because the opposition was inadmissible. The Board concluded that not the opposition, but the appeal by the proprietor was inadmissible, as the proprietor was not adversely affected by the decision. The Board carefully considered the arguments submitted by the appellant before it, as well as the minutes of the oral proceedings before the Opposition Division.

Summary of Facts and Submissions

I. The appeal lies against the interlocutory decision of the opposition division dated 11 August 2010 that, account being taken of the amendments made by the patent proprietor during the opposition proceedings, name­ly the set of claims filed as "Main Request" during oral proceedings before the opposition division, Euro­pean patent No. EP1309926 and the invention to which it related were found to meet the requirements of the EPC.

[...]

V. In an annex to a summons to oral proceedings the board informed the appellant of its preliminary opinion accor­­ding to which the appeal was inadmissible pursuant to Article 107 EPC 1973 because the appellant was not adversely affected by the decision under appeal. The board also indicated that it tended to consider the oppo­sition admissible.

VI. Oral proceedings were held on 14 November 2014. The appellant's final request was that the decision under appeal be set aside and that the European patent be main­tained as granted because the opposition was inadmissible. At the end of the oral proceedings the chairman announced the decision of the board.

Reasons for the Decision

1. In preparation for the oral proceedings before the oppo­sition division, with a letter dated 11 No­vem­ber 2009, the proprietor filed six sets of claims as then auxiliary requests 1-6. During those oral procee­dings the appellant made the 4th auxiliary request its main request and withdrew the four higher ranking re­quests (see minutes of oral proceedings, page 1, first para.; decision, facts and submissions, 8).

1.1 During those oral proceedings, the proprietor also raised the issue of whether the opposi­tion was ad­missible (see mi­nutes, p. 2, 7th par.). After dis­cussion with the par­ties and deli­be­ration, the oppo­sition division stated that it "con­sider[ed]" the oppo­sition to be admissible (see minutes p. 3, 5th par.). The board takes this to mean that the opposi­tion divi­sion expressed its con­clusion on this issue, but did not pronounce a decision at this point.

1.2 Thereafter, the minutes (p. 3, pars. 2 and 3 from the bottom) report that "[t]he chairman asked the pro­pri­e­tor to clarify the requests on file: the rejection of the opposition or to maintain the patent in amended form" and that "[t]he proprietor said that his request was to maintain in amended form."

1.3 Hence, the interlocutory decision of the opposition di­vision found in favour of the highest-ranking substan­tive re­quest of the appellant.

1.4 Moreover, in the board's view, the minutes must be un­der­stood to imply that the proprietor no longer re­quested the opposition division to find the opposition to be inad­missible. Any request to this effect which may have been made before was thereby withdrawn.

2. The appellant argued as follows.

2.1 During the oral proceedings before the opposition di­vi­sion the appellant had expressed its doubts as to whe­ther the opposition was admissible, effectively re­ques­ting the opposition division to find that it was not, and this point was extensively discussed.

2.2 The subsequent request by the chairman of the opposi­tion division that the pro­pri­etor clarify its request was exclusively related to sub­stantive requests. It was clear at the time that what the proprietor was asked to clarify was on the basis of which sets of claims it re­quested that the pa­tent be maintained. It was also clear, so the ar­gument, that by making the substantive request that the patent be maintained in amended form, and irrespective of the fact that the basis for the amen­ded patent was labelled "main request", the propri­e­tor did not intend to with­draw its procedural request that the opposition be found inadmissible. Rather, main­­­­te­nance in amended form was requested merely if the opposition division decided that the oppo­sition was admissible.

2.3 Furthermore the appellant argued that the opposition divi­sion was obliged ex officio to decide on the ad­missi­bility of the opposition, i.e. irrespective of whether a corres­ponding request was made, and indeed such a decision was delivered (see decision under appeal, reasons 1).

2.4 The proprietor did not expressly request the mainte­nance of the patent as granted because it did not wish to defend the patent as granted in substance once the opposition division had come to the conclusion - and on the condition that it was to find - that the opposi­tion was admissible. An obligation on the pro­pri­e­tor to request maintenance of the patent as granted so as to be able to raise the inadmissibility of the oppo­sition in appeal would interfere with the appellant's freedom to steer the proceedings according to its requests.

2.5 Hence, the decision rejected the proprietor's unambi­guously expressed opinion that the opposition was inad­missible so that the proprietor was clearly adverse­ly affected by the decision and its appeal must be consi­dered admissible.

3. The board cannot follow the appellant's arguments.

3.1 The fact that admissibility of the opposition had been discussed in oral proceedings before the opposition di­vision is not sufficient to imply that a corres­pon­ding request was maintained. It is noted for illustration that it is common-place for parties not to maintain a particular set of claims after they have have been dis­cussed oral proceedings and found not to be allowable.

3.2 While it is true that the minutes do not report that the pro­­prietor explicitly withdrew its request to have the opposition be found inadmissible, the board does not share the appellants view that this request was thus implicitly maintained.

3.3 In the board's view, the minutes are unambiguous as they stand. According to the minutes, a discussion about the admissibility of the opposition took place, after which the chairman of the opposition divi­sion, "asked the pro­prietor to clarify its requests on file". Further according to the minutes, the pro­pri­etor clear­ly stated ­that it did not want to defend the patent in unamended form. Had the oppo­sition been found inad­missible, the patent as granted would have stood. Hence, the ex­press requests as reported in the mi­nutes are, in the board's view, inconsistent with the appellant's view that the re­quest to find the oppo­si­tion inad­missible was main­tained.

3.4 The appellant argued that it was clear to the opposi­tion division at the time that the appellant's "main request" was meant to complement its request to have the opposition found inadmissible, not to replace it. The board however con­siders that the minutes do not allow the conclusion that the opposition division may have thought and silently understood anything other than what is explicitly reported. Moreover, the deci­sion itself appears to contradict the appellant's posi­tion. The decision states that the opposition was found admissible but did not provide reasons why the proprietor's argu­ments in this respect were dismissed. The board understands this to mean that the opposition division considered the admissibi­li­­ty of the opposition to no longer be at issue.

3.5 In view of Rule 76(1) EPC 1973, the board must assume that the minutes re­port accura­tely what happened during the oral proceedings before the opposition division, in par­ti­cu­lar which requests were made and which decisions were issued. The board also notes that the appellant has not requested that the mi­nutes be correc­ted. Not even during oral proceedings before the board, when it was ex­plained that the lite­ral wording in the minutes contra­dic­ted the appellant's position as to what its requests were at the time, did the appellant argue that the minutes were incorrect or request that they should be corrected now, even if late.

3.6 Therefore, the board concludes that the proprietor did not maintain its request that the opposition be found inadmissible before the opposition division.

4. The board agrees with the appellant that the opposition division is ob­liged to establish ex officio whether an opposition is admissible and, according to the decision (reasons 1), they indeed fulfilled this obligation.

4.1 The reasoning given in the decision is very brief and does not explain why the pertinent arguments by the pro­pri­e­tor were dismissed by the opposition division. The appellant argues (letter dated 7 October 2014, p. 2, 3rd para.) that it "cannot be to the disadvantage of the Proprietor that the interlocutory decision is not properly accompanied by the discussion and arguments put forward by the Proprietor". The board agrees inso­far as the brevity of the reasoning in the decision must not adversely affect a party. However, it also con­­siders that insufficient reasoning in a decision may only adversely affect an appellant if the decision it­self is taken against the appellant's requests. In the present case, had the ad­missi­bi­lity of the opposition been a conten­tious issue, the board might have found the deci­sion to be in­suffi­ciently reasoned in this respect, see Rule 68(2) EPC 1973, and have con­sidered immediate re­mittal to the oppo­sition division pursuant to Article 11 RPBA due to a fundamental pro­cedural de­ficiency in the oppo­sition proceedings. The board notes in passing that the appellant did not argue that such a fundamental procedural deficiency had occurred, in par­ti­cular not in its grounds of appeal. More­over, since there is no evi­dence that the question was in­deed con­ten­tious, the board con­siders the short rea­so­ning in the decision to be sufficient.

4.2 Furthermore, since the admissibility of the opposition was no longer expressly challenged by the proprietor when the deci­sion was delivered, it must be concluded that the appellant was not adversely affected by the oppo­si­tion division's decision in this respect.

5. The board therefore comes to the conclusion that the proprietor is not adversely affected by the decision under appeal so that the appeal is inadmissible accor­ding Article 107 EPC 1973.

Order

For these reasons it is decided that:

The appeal is rejected as inadmissible.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T215710.20141114. The whole decision can be found here. The file wrapper can be found here. Photo "NO ENTRT?" by Luke Hayfield obtained via Flickr.