T 551/15 - Outcome of G 1/18 not relevant (?)
Within the two-month period under Article 108 EPC, the opponent filed notice of appeal and paid the corresponding appeal fee. On 17 March 2015, i.e. prior to the expiry of the two-month period under Article 108 EPC, the patent proprietor submitted, via the electronic filing system, a document entitled "Letter accompanying subsequently filed items". The document indicated the patent application number, the name and address of the representative and the representative's reference number. Under the heading "Fees" it specified the fee for appeal, and under the heading "Payment" it contained a debit order authorising the EPO to debit the appeal fee from the deposit account, followed by the details as to the deposit account and an indication relating to where any reimbursement was to be made. The document did not contain any further text, nor was it accompanied by any further document. The payment of the appeal fee was effected with the date of 17 March 2015. In its statement of grounds of appeal, the patent proprietor stated: "Further to the Notice of Appeal filed on 17.03.2015 by the payment of the appropriate fee, we hereby submit the Grounds of Appeal...". Together with this letter, the patent proprietor filed claim sets as the main request and auxiliary requests. Did the proprietor file a notice of appeal? If so, did he file it in time or too late? if it was too late, was the appeal deemed not filed or inadmissble? Did the proprietor's appeal get into existence? Did the opponent get the appeal fee reimbursed (which can only be done if there was no legal basis for its payment or if there is a legal provision for the refund/reimbursement)? What is the effect of G 1/18 on this case - in particular, did it need to be stayed? Is it of relevance herein that appeal proceedings anyhow got into existence due to the appeal of the opponent, and that the proprietor would be a party as of right in both situations (deemed not filed or inadmissible)? If G 1/18 is applicable, but the case is not stayed as the outcome on the merits of the appeal does not change, can a decision on the reimbursement/refund be made without staying in view of the relevance of G 1/18 on that decision (esp. as refund is not at the discretion of the EPO/Board)?
Summary of Facts and Submissions
I. The present appeal is against the interlocutory decision of the opposition division concerning the maintenance of European patent No. 1 833 926 in amended form, based on the sole claim filed on 28 November 2014 as auxiliary request 10. The claim reads as follows:
"1. Process for the preparation of a powder coating composition comprising at least one resin, at least one crosslinker, at least one pigment and at least one dispersant characterised in that the resin is a polyester resin and said resin is prepared in a reactor and that the dispersant is added to the resin either just before the resin leaves the reactor or while the resin leaves the reactor."
II. The following documents are referred to in the present decision:
[...]
III. The patent, granted in 2011, had been opposed on the grounds of Article 100(c), 100(b) and 100(a) EPC for lack of novelty and inventive step.
In the appealed decision, the opposition division had held that the process claimed in auxiliary request 10 did not add subject-matter and that it was novel. In addition, document D5 did not belong to the prior art and the claimed process was inventive starting from either of documents D2 and D3.
IV. Within the two-month period under Article 108 EPC, the opponent filed notice of appeal and paid the corresponding appeal fee.
On 17 March 2015, i.e. prior to the expiry of the two-month period under Article 108 EPC, the patent proprietor submitted, via the electronic filing system, a document entitled "Letter accompanying subsequently filed items". The document indicated the patent application number, the name and address of the representative and the representative's reference number. Under the heading "Fees" it specified the fee for appeal, and under the heading "Payment" it contained a debit order authorising the EPO to debit the appeal fee from the deposit account, followed by the details as to the deposit account and an indication relating to where any reimbursement was to be made. The document did not contain any further text, nor was it accompanied by any further document. The payment of the appeal fee was effected with the date of 17 March 2015.
V. With its statement of grounds of appeal, the opponent contested the appealed decision and filed document D15 to prove that D5 belonged to the prior art. Moreover, the opponent argued that the process of auxiliary request 10 added subject-matter, could not be reproduced by the skilled person, and was obvious from the combination of documents D5 and D7.
On 26 February 2016, the opponent filed document D16.
VI. In its statement of grounds of appeal, the patent proprietor stated: "Further to the Notice of Appeal filed on 17.03.2015 by the payment of the appropriate fee, we hereby submit the Grounds of Appeal...". Together with this letter, the patent proprietor filed claim sets as the main request and auxiliary requests 1 to 17; these claim sets were identical to those underlying the appealed decision.
Subsequently, with its reply to the opponent's statement of grounds of appeal and with a letter dated 14 June 2016, the patent proprietor requested respectively that documents D15 and D16 not be admitted into the appeal proceedings.
VII. In a communication dated 17 February 2016, the board gave its preliminary opinion that the patent proprietor's appeal had to be considered as not having been filed and that the corresponding appeal fee would be reimbursed. This opinion was contested by the patent proprietor in its letter of 15 June 2016.
VIII. In view of the parties' requests for oral proceedings, the board summoned both to oral proceedings and addressed several issues in an accompanying communication.
IX. In the course of the oral proceedings held before the board, the patent proprietor withdrew its main request and auxiliary requests 1 to 9, 12, 14, 16 and 17.
X. The opponent's arguments, where relevant to the present decision, may be summarised as follows:
Admission of documents D15 and D16
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Inventive step - claim 1 of auxiliary request 10
[...]
Sufficiency of disclosure - auxiliary request 10
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XI. The patent proprietor's arguments, where relevant to the present decision, may be summarised as follows:
Patent proprietor's appeal
The patent proprietor's appeal was admissible. The letter submitted on 17 March 2015 fulfilled all the necessary requirements for a notice of appeal.
The legal framework under the EPC 2000 did not require the filing of notice of appeal and payment of the appeal fee to be enacted via separate documents. That the board required a "clear and unambiguous declaration of intent that an appeal is filed" was arbitrary and did not find any basis in the relevant legal provisions.
It followed from decision T 620/13, that the request under Rule 99(1)(c) EPC could be implicit.
Furthermore, the present case was similar to the one underlying decision T 925/91.
Decision J 19/90 was correct under the legal framework of the EPC 1973 but was no longer applicable since the entry into force of the EPC 2000 because the requirements as to the filing of an admissible appeal had been lowered: not only had the requirement in Article 108 EPC that the appeal had to be filed "in writing" been dropped, thereby allowing submissions in electronic form, but also the criteria concerning notice of appeal had changed. Whereas Rule 64(b) EPC 1973 had required "a statement identifying the decision which is impugned and the extent to which the amendment or cancellation of the decision is requested", Rule 99(1)(b) and (c) EPC only required "an indication of the decision impugned" and "a request defining the subject of the appeal".
The letter of 17 March 2015 was not simply a mere debit order; it also contained an indication that it related to the filing of an appeal, and, hence, the situation was different from the one underlying decision J 19/90. The letter expressly mentioned a "fee for appeal", separate from the mode of payment. There was no apparent reason why a party would pay the fee for appeal within the time limit for a specific case other than for the purpose of filing an appeal.
The registrar's communication dated 20 March 2015 announcing the commencement of proceedings before the board confirmed that the letter of 17 March 2015 was not only considered as a debit order.
It was unclear what the substantive contribution and purpose of the board's stance were. Irrespective of the presence of any explicit declaration of the intent to appeal within the first two months of notification of the decision, it was only after expiry of the four-month period for filing the statement of grounds of appeal under Article 108, third sentence, EPC that there could be legal certainty as to the filing of an appeal.
However, if the board considered that no admissible appeal had been filed by the patent proprietor, it was accepted that this had, in view of the principle of prohibition of reformatio in peius, consequences as to which claim requests could be permissibly pursued.
Admission of documents D15 and D16
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Inventive step - claim 1 of auxiliary request 10
[...]
Sufficiency of disclosure - auxiliary request 10
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XII. The parties' final requests were the following:
- The opponent requested that the decision under appeal be set aside and the patent be revoked in its entirety.
- The patent proprietor requested that the decision under appeal be set aside and that the patent be maintained in amended form on the basis of any of the claim sets filed with the statement of grounds of appeal as auxiliary requests 10, 11, 13 and 15, auxiliary request 10 being the request held allowable by the opposition division.
XIII. At the end of the oral proceedings, the board's decision was announced.
Reasons for the Decision
1. The opponent's appeal complies with Articles 106 to 108 and Rule 99 EPC and is therefore admissible.
2. Patent proprietor's appeal
No appeal was validly filed by the patent proprietor. The appeal fee was duly paid, but nothing had been received within the two-month time limit under Article 108, first sentence, EPC which could be considered a notice of appeal.
2.1 Mere payment of the appeal fee within the two-month time limit under Article 108, first sentence, EPC does not constitute the valid filing of an appeal.
According to Article 108, first sentence, EPC, notice of appeal has to be filed within two months of notification of the decision. The second sentence of this provision stipulates that notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid.
It clearly follows from the wording of Article 108, first and second sentences, EPC that filing notice of appeal and payment of the appeal fee are two distinct requirements, each of which has to be fulfilled separately (see also T 778/00, OJ EPO 2001, 554, point 2.2 of the reasons). This did not change in the course of the revision of the EPC in the year 2000 (see also T 861/12, point 4.4.1 of the reasons; Special edition No. 4, OJ EPO 2007, pages 100, 120), in contrast to, for instance, the legal remedy of further processing, which, since the entry into force of EPC 2000, can be requested by mere payment of the prescribed fee (see Article 121(1) and Rule 135(1) EPC).
Even though the board agrees with the patent proprietor in that the two acts - filing notice of appeal and paying the appeal fee - do not necessarily have to be performed via separate documents, the mere payment of the appeal fee still cannot replace the filing of notice of appeal.
2.2 The "Letter accompanying subsequently filed items" submitted on 17 March 2015 ("the letter") being the sole document received by the EPO from the patent proprietor before the expiry of the two-month time limit under Article 108 EPC, does not, however, qualify as a notice of appeal.
2.2.1 A notice of appeal is a declaration directed to the EPO of the intention to challenge a particular decision by means of an appeal. The declaration of the intent to file an appeal must be clear and unambiguous (see also J 19/90, Headnote and point 2.1.3 of the reasons; T 371/92, OJ EPO 1995, 324, point 3.5 of the reasons; J 16/94, OJ EPO 1997, 331, point 4 of the reasons; T 460/95, OJ EPO 1998, 587, 594, second paragraph; T 445/98, point 3 of the reasons; T 778/00, supra, point 2.1 of the reasons; T 377/11, point 5.1 of the reasons; T 620/13, point 5 of the reasons). This prerequisite is also reflected in Rule 99(1)(c) EPC, according to which the notice of appeal must contain a "request for defining the subject of the appeal".
The board accepts, in line with established case law, that the request under Rule 99(1)(c) EPC can be implicit. What may be implicit in this context, however, relates only to the indication of whether the impugned decision is to be set aside in whole or only in part (see also T 620/13, point 7 of the reasons with reference to T 358/08). It does not mean that a clear and unambiguous declaration of intent that an appeal is filed, constituting notice of appeal within the meaning of Article 108 EPC, is not required. Accordingly, the patent proprietor's reference to decision T 620/13 provides no support for its case.
Nor can decision T 925/91 (OJ EPO 1995, 469) be of assistance to the patent proprietor, since, in the situation underlying that decision, an explicit declaration expressing the definite intention to contest a particular decision by means of an appeal, and consequently a statement qualifying as notice of appeal, had in fact been filed ("Gegen die Entscheidung... legen wir... hiermit... Beschwerde ein"; see letter of 3 December 1991 referred to in T 925/91, point 1.1 of the reasons; translation by the board: "Against the decision ... we ... herewith file ... notice of appeal").
Furthermore, the changes introduced by the EPC 2000 revision into the provisions governing the filing of an appeal as referred to by the patent proprietor (see section XI above) did not change the concept of what constitutes notice of appeal under Article 108 EPC (see first paragraph of this point; also e.g. T 1943/09, point 4 of the reasons; T 377/11, point 5.2 of the reasons). Therefore these changes need not be further addressed.
2.2.2 The letter received on 17 March 2015 indicates the particulars necessary for the payment to be effected via debiting of the appeal fee from a deposit account in accordance with point 6.3 of the Arrangements for Deposit Accounts (in the version of 1 April 2014, Supplementary publication 4, OJ EPO 2014, 5), and provides information concerning any re-payments. In the absence of any further statement in it, the letter cannot be considered as going beyond a mere debit order.
In particular, the letter does not represent a clear and unambiguous declaration of intent that an appeal is being filed at the moment of its submission. Considered objectively from the point of view of the adverse party, the EPO and the public, the sending of a debit order for the payment of the appeal fee implies, at most, that the party envisages filing an appeal. It still leaves the party the choice of whether, or at what point in time, to file notice of appeal as the necessary second act for an appeal to come into existence.
2.2.3 It is also established case law that filing the form for the payment of fees and costs (EPO Form 1010) or filing a "Letter accompanying subsequently items" that contains nothing more than a debit order for the payment of the appeal fee does not qualify as filing notice of appeal (see in particular J 19/90, Headnote; T 371/92, supra, point 3.6 of the reasons; T 445/98, point 3 of the reasons; T 778/00, supra, points 1 and 2.4 of the reasons). Further, it has been explicitly confirmed in decisions analysing the EPC 2000-related changes that this case law continues to be relevant following the entry into force of the EPC 2000 (see T 1479/09, point 4 of the reasons; T 1943/09, point 4 of the reasons; T 377/11, point 5.2 of the reasons; T 861/12, point 4 of the reasons).
2.2.4 In contrast to the patent proprietor's opinion, it is of no relevance to the present case that the board's registrar had been able to identify the letter as associated with a potential appeal, which resulted in the issuance of EPO Form 3204 informing the parties of the commencement of proceedings before the board and the allotted appeal number. This is the sole, stated purpose of this communication. In no way does such a communication reflect on whether or not an appeal has been validly filed or is well founded (see also T 620/13, point 6 of the reasons; J 5/15, point 2 of the reasons).
2.2.5 It is true that where notice of appeal has been filed, it is only after expiry of the four-month time limit for filing the statement of grounds of appeal pursuant to Article 108, third sentence, EPC, that there can be legal certainty as to whether there might be an admissible appeal. However, it is not this kind of consideration which matters here. It is simply the application of the legal concept as established by the EPC legislator for the initiation of admissible appeal proceedings (as to the legislative history, see T 778/00, supra, point 4 of the reasons).
3. Referral G 1/18
Even though the appeal fee had been paid on time, no notice of appeal was filed by the patent proprietor within the two-month time limit under Article 108, first sentence, EPC. Thus, the patent proprietor's appeal did not come into existence and, accordingly, the patent proprietor's appeal is deemed not to have been filed.
3.1 When making its decision, the board was well aware of a point of law referred to the Enlarged Board of Appeal and pending as referral G 1/18. The referred question comprises several alternatives one of them directed to the issue of whether the filing of the notice of appeal after expiry of the two-month time limit under Article 108 EPC results in the appeal being inadmissible or deemed not filed.
The present case may be considered as falling under this alternative because the patent proprietor's statement of grounds of appeal comprises all the necessary elements of a notice of appeal pursuant to Article 108, first sentence, and Rule 99(1) EPC, and thus it can be said that notice of appeal was filed late.
Where a referral under Article 112(1) EPC is pending before the Enlarged Board of Appeal and the outcome of an appeal case entirely depends on the outcome of the referral, a board can stay its proceedings at the request of a party or ex officio. Even though there is no explicit legal provision in this regard, the board considers it as established practice amongst the boards of appeal that a stay of proceedings may, inter alia, be based on considerations relating to the binding effect of opinions or decisions of the Enlarged Board as provided for in Article 21 RPBA and a uniform application of the law.
In the present case, the board did not stay the appeal proceedings because the outcome of the case did not depend entirely on the outcome of the referral - except for the question of whether the board's order regarding the patent proprietor's appeal was correct. Whether the patent proprietor's appeal is to be considered as inadmissible or deemed not filed leads, in both situations, to the same procedural consequence, which is that the patent proprietor is limited to defending the patent in amended form as considered allowable by the opposition division.
The point in relation to which the outcome of referral G 1/18 is indeed relevant concerns the question of the refund of the appeal fee paid by the patent proprietor (see point 3.2 below). However, the board's decision is favourable for the patent proprietor, who is the sole person concerned by this question. No other person - be it the opponent or any third party - can be affected by the outcome of the board's decision on the refund of the patent proprietor's appeal fee. Furthermore, neither of the two parties to the proceedings had requested a stay of proceedings in view of referral G 1/18, nor had they any objections to the way the board intended to proceed as indicated at the oral proceedings.
3.2 The board bases its conclusion, which is that the patent proprietor's appeal should be deemed not to have been filed, on Article 108, first and second sentences, EPC read together (see also J 16/82, OJ EPO 1983, 262, point 9 of the reasons; T 778/00, supra, point 2.2 of the reasons). Only notice of appeal filed on time can trigger the falling due of the appeal fee pursuant to Article 4(1) RFees, payment of which in turn leads to the consequence that the notice of appeal is deemed filed. Accordingly, for an appeal to come into existence, in the board's opinion the two acts - filing notice of appeal and payment of the appeal fee - must take place within the two-month time limit under Article 108 EPC. If, as in the present case, the notice of appeal is filed after expiry of the two-month time limit, it cannot be deemed to have been filed because the appeal fee, even if paid within the two-month time limit, has not in fact fallen due in the absence of notice of appeal being filed on time. Thus, the appeal fee has been paid without a legal basis.
Non-compliance with any of these two requirements leads, in the board's opinion, to a finding of the appeal being deemed not filed and to a corresponding order by the board (see also T 445/98, point 5 of the reasons).
The legal consequence of the appeal being deemed not filed is defined in Article 108 EPC itself. Rule 101(1) EPC, which provides for a rejection of an appeal as being inadmissible, is construed by the board as relating to situations in which an appeal had already come into existence (i.e. decision T 489/93, point 9 of the reasons, is not followed by this board).
4. Admission of document D15 - Article 12(4) RPBA
Document D15 was filed by the opponent with the statement of grounds of appeal in order to prove that document D5 was publicly available at the priority date of the patent in suit. The patent proprietor objected to the admission of D15, asserting that it should have been filed with the notice of opposition, anticipating that the publication date of D5 would be challenged.
The board cannot agree with that view and considers that the filing of D15 was an appropriate reaction to the appealed decision, where the opposition division had disregarded D5 because it had not been convinced that the document was available at the priority date of the patent in suit. The opponent had, with its notice of opposition and together with document D5, also filed document D5', submitting that document D5 had not only been made available at a conference in Warsaw 23-26 November 2004 but also that an equivalent document had been made available at the ICE 2004 conference in Chicago on 27-29 October 2004. The patent proprietor, however, only questioned the prior-art status of document D5 on the final date for making written submissions before the oral proceedings in opposition, even though in the notice of opposition D5 had been presented as a highly relevant document for both novelty and inventive step. It thus cannot be concluded that the opponent should have filed D15 during opposition proceedings.
In view of the considerations above, the board saw no reasons to disregard document D15 under Article 12(4) RPBA and, hence, it was admitted into the proceedings.
5. Document D5 - prior art under Article 54(2) EPC
In view of documents D5', D5'' and D15, the board is convinced that document D5 was made available to the public at the ACT '04 conference held in Warsaw 23-26 November 2004, i.e. before the priority date of the patent in suit.
Document D5, first page, mentions the title and the authors and has, inter alia, the following indications: "Advances in Coatings Technology ACT '04", "Paper 36", "23-26 November 2004, Warsaw, Poland". Document D5'' contains the table of contents of the conference papers for ACT '04, and lists on page 6 the title and the authors of document D5 as paper 36. The first page of D5'' indicates the title of the document ("Advances in Coatings Technology", "ACT '04", "Conference Papers"), and the same place and dates as document D5. That the latter information represents not only the date and place of the conference event but also the time and place of publication is confirmed by document D15. This is a declaration signed by Ms Pajak in her capacity as Chair of the Organising Committee of the ACT '04 Conference. Ms Pajak confirms therein that the conference papers from the 6th International Conference ACT '04 had been available to the participants on the dates of the conference, which was held on 23-26 November 2004 in Warsaw. From document D5' it is further derivable that a paper with the same title and the same authors as document D5 had been presented at the ICE 2004 conference in October 2004 in Chicago.
The patent proprietor referred to the fact that document D15 was not a sworn declaration. However, there is no requirement under the EPC with regard to the kind of evidence a party is allowed to submit. Article 117(1) EPC lists various means of evidence in a non-exhaustive manner, and it is for a party to submit the evidence on the basis of which its assertions would have to be assessed, if necessary. In the circumstances of the present case, the board had documents D5, D5', D5'' and D15 as a basis on which to consider the opponent's assertions.
Accordingly, the content of document D5 forms part of the state of the art within the meaning of Article 54(2) EPC.
6. Admission of document D16 - Article 13(1) RPBA
Document D16 is an experimental report with comparative examples filed by the opponent after the four-month period for replying to the patent proprietor's statement of grounds of appeal.
The filing of document D16 therefore represented an amendment of the opponent's case, and the admission of the document into the appeal proceedings is at the board's discretion, taking into account, inter alia, the complexity of the new subject-matter submitted, the state of the proceedings and procedural economy. The clause in the opponent's statement of grounds of appeal in paragraph 3, page 7, which states that it reserved the right to later provide, if needed, experimental support for the line of argument by submitting comparative results to demonstrate that the technical problem had not been solved, has no impact on the consideration of there being an amendment to the opponent's case. It is not only a general, unspecific statement, but also a conditional one, leaving it completely open whether experimental data would be filed at all.
Document D16 was filed 10 months after the opponent's statement of grounds of appeal and five months after the patent proprietor's reply to that statement. By that time, no change in the appeal proceedings had occurred which justified the filing of further comparative examples. The lack of resources invoked by the opponent for filing D16 at that late stage cannot be considered as a convincing reason, as this was related to the opponent's internal priority setting and was thus a matter of deliberate choice on its part.
Moreover, the opponent itself considered the data in document D16 as complementary. The data were therefore regarded by the board as no more relevant than the opponent's submissions already on file.
In view of the considerations above, the board, exercising its discretion under Article 13(1) RPBA, decided not to admit document D16 into the appeal proceedings.
7. Amendments - claim 1 of auxiliary request 10
[...]
For this reason, claim 1 of auxiliary request 10 does not add subject-matter (Article 123(2) EPC).
8. Inventive step - claim 1 of auxiliary request 10
8.1 Claim 1 of auxiliary request 10 is directed to the preparation of a powder coating composition comprising a polyester resin, a dispersant, a pigment and a crosslinker, which is characterised by the fact that the dispersant is added to the polyester resin just before or at the end of the resin synthesis. According to the patent in paragraphs [0006] and [0046], this process results in powder coating compositions with improved flow and improved or at least equivalent haze and gloss.
8.2 In the appeal proceedings, the opponent assessed inventive step starting from document D5 as the closest prior art. The patent proprietor did too, following the board's finding that D5 belonged to the prior art. The board saw no reason to take a different stance.
D5 discloses rheology studies and final coating properties of three powder coating compositions comprising, among other things, the ingredients recited in present claim 1: a polyester resin (Uralac P815), a dispersant (A, B or Solplus L300), a pigment (Carbon Black FW200, Kronos 2310 or Paliotan Yellow L1945), and a crosslinker (Araldite PT910 or Primid XL552) (see Tables 3.1, 4.1, 5.1 and 5.2). The compositions were prepared by premixing in a tumble mixer, extruding, and milling the extrudate (see section 2.2). The results reported in section 6 revealed that the use of a polymeric dispersant reduces the compositions' viscosity and improves their dispersion and gloss.
8.3 The process in claim 1 differs from the one in D5 in that the resin is prepared in situ and the dispersant is added to the resin just before or as the resin leaves the synthesis reactor; in D5, the preparation process does not involve the synthesis of the resin in situ and the components are all mixed together without the resin being previously combined with the dispersant.
8.4 The technical problem to be solved, as defined in paragraphs [0006] and [0046] of the patent, is the preparation of powder coating compositions with improved flow, without deteriorating the haze and gloss. The solution proposed is the process defined in claim 1.
8.5 The board is satisfied that the process in claim 1 effectively solves the problem posed, as demonstrated by the examples in the patent.
[...]
8.5.3 The opponent also argued that comparative examples A-2 to F-2 did not exactly reproduce the compositions of D5 and therefore did not provide a valid comparison with the closest prior art.
The board disagrees. [...]
Therefore, the board cannot agree with the opponent that the process of claim 1 was obvious from the disclosures in documents D5 and D7, taken alone or in combination.
8.7 In the appealed decision, the opposition division had considered the disclosures in documents D2 and D3 as the closest prior art and come to the conclusion that the process in claim 1 of auxiliary request 10, which is identical to the process in present claim 1, was inventive. During the appeal proceedings, the opponent did not contest the opposition division's approach starting from D2 or D3 and presented inventive-step objections starting from the disclosure in document D5 only. Hence, the board has no reason to review the opposition division's finding on inventive step starting from the disclosures in document D2 or D3.
8.8 Having regard to the above, the board concludes that the process in claim 1 of auxiliary request 10 is inventive (Article 56 EPC).
9. Sufficiency of disclosure - auxiliary request 10
The opponent contended that the skilled person was not able to reproduce the claimed process due to [...]
The board does not share the opponent's viewpoint. [...]
In conclusion, at the effective date, the skilled person was able to prepare a powder coating composition by the process defined in claim 1 without undue burden. Hence, the invention as defined in auxiliary request 10 is sufficiently disclosed (Article 83 EPC).
10. Having regard to the above, the board has no reason to set aside the opposition division's decision that the patent as amended in the form of auxiliary request 10 and the invention to which it relates meet the requirements of the EPC. Hence, the opponent's appeal is to be dismissed.
11. Reimbursement of the patent proprietor's appeal fee
As no notice of appeal had been received from the patent proprietor within the two-month time limit under Article 108, first sentence, EPC, the corresponding appeal fee did not fall due pursuant to Article 4(1) RFees. Thus, the appeal fee was paid without a legal basis and must therefore be refunded (see also e.g. T 778/00, supra, point 6 of the reasons).
Order
For these reasons it is decided that:
1. The patent proprietor's appeal is deemed not to have been filed.
2. The opponent's appeal is dismissed.
3. The patent proprietor's appeal fee is to be reimbursed.
I. The present appeal is against the interlocutory decision of the opposition division concerning the maintenance of European patent No. 1 833 926 in amended form, based on the sole claim filed on 28 November 2014 as auxiliary request 10. The claim reads as follows:
"1. Process for the preparation of a powder coating composition comprising at least one resin, at least one crosslinker, at least one pigment and at least one dispersant characterised in that the resin is a polyester resin and said resin is prepared in a reactor and that the dispersant is added to the resin either just before the resin leaves the reactor or while the resin leaves the reactor."
II. The following documents are referred to in the present decision:
[...]
III. The patent, granted in 2011, had been opposed on the grounds of Article 100(c), 100(b) and 100(a) EPC for lack of novelty and inventive step.
In the appealed decision, the opposition division had held that the process claimed in auxiliary request 10 did not add subject-matter and that it was novel. In addition, document D5 did not belong to the prior art and the claimed process was inventive starting from either of documents D2 and D3.
IV. Within the two-month period under Article 108 EPC, the opponent filed notice of appeal and paid the corresponding appeal fee.
On 17 March 2015, i.e. prior to the expiry of the two-month period under Article 108 EPC, the patent proprietor submitted, via the electronic filing system, a document entitled "Letter accompanying subsequently filed items". The document indicated the patent application number, the name and address of the representative and the representative's reference number. Under the heading "Fees" it specified the fee for appeal, and under the heading "Payment" it contained a debit order authorising the EPO to debit the appeal fee from the deposit account, followed by the details as to the deposit account and an indication relating to where any reimbursement was to be made. The document did not contain any further text, nor was it accompanied by any further document. The payment of the appeal fee was effected with the date of 17 March 2015.
V. With its statement of grounds of appeal, the opponent contested the appealed decision and filed document D15 to prove that D5 belonged to the prior art. Moreover, the opponent argued that the process of auxiliary request 10 added subject-matter, could not be reproduced by the skilled person, and was obvious from the combination of documents D5 and D7.
On 26 February 2016, the opponent filed document D16.
VI. In its statement of grounds of appeal, the patent proprietor stated: "Further to the Notice of Appeal filed on 17.03.2015 by the payment of the appropriate fee, we hereby submit the Grounds of Appeal...". Together with this letter, the patent proprietor filed claim sets as the main request and auxiliary requests 1 to 17; these claim sets were identical to those underlying the appealed decision.
Subsequently, with its reply to the opponent's statement of grounds of appeal and with a letter dated 14 June 2016, the patent proprietor requested respectively that documents D15 and D16 not be admitted into the appeal proceedings.
VII. In a communication dated 17 February 2016, the board gave its preliminary opinion that the patent proprietor's appeal had to be considered as not having been filed and that the corresponding appeal fee would be reimbursed. This opinion was contested by the patent proprietor in its letter of 15 June 2016.
VIII. In view of the parties' requests for oral proceedings, the board summoned both to oral proceedings and addressed several issues in an accompanying communication.
IX. In the course of the oral proceedings held before the board, the patent proprietor withdrew its main request and auxiliary requests 1 to 9, 12, 14, 16 and 17.
X. The opponent's arguments, where relevant to the present decision, may be summarised as follows:
Admission of documents D15 and D16
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Inventive step - claim 1 of auxiliary request 10
[...]
Sufficiency of disclosure - auxiliary request 10
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XI. The patent proprietor's arguments, where relevant to the present decision, may be summarised as follows:
Patent proprietor's appeal
The patent proprietor's appeal was admissible. The letter submitted on 17 March 2015 fulfilled all the necessary requirements for a notice of appeal.
The legal framework under the EPC 2000 did not require the filing of notice of appeal and payment of the appeal fee to be enacted via separate documents. That the board required a "clear and unambiguous declaration of intent that an appeal is filed" was arbitrary and did not find any basis in the relevant legal provisions.
It followed from decision T 620/13, that the request under Rule 99(1)(c) EPC could be implicit.
Furthermore, the present case was similar to the one underlying decision T 925/91.
Decision J 19/90 was correct under the legal framework of the EPC 1973 but was no longer applicable since the entry into force of the EPC 2000 because the requirements as to the filing of an admissible appeal had been lowered: not only had the requirement in Article 108 EPC that the appeal had to be filed "in writing" been dropped, thereby allowing submissions in electronic form, but also the criteria concerning notice of appeal had changed. Whereas Rule 64(b) EPC 1973 had required "a statement identifying the decision which is impugned and the extent to which the amendment or cancellation of the decision is requested", Rule 99(1)(b) and (c) EPC only required "an indication of the decision impugned" and "a request defining the subject of the appeal".
The letter of 17 March 2015 was not simply a mere debit order; it also contained an indication that it related to the filing of an appeal, and, hence, the situation was different from the one underlying decision J 19/90. The letter expressly mentioned a "fee for appeal", separate from the mode of payment. There was no apparent reason why a party would pay the fee for appeal within the time limit for a specific case other than for the purpose of filing an appeal.
The registrar's communication dated 20 March 2015 announcing the commencement of proceedings before the board confirmed that the letter of 17 March 2015 was not only considered as a debit order.
It was unclear what the substantive contribution and purpose of the board's stance were. Irrespective of the presence of any explicit declaration of the intent to appeal within the first two months of notification of the decision, it was only after expiry of the four-month period for filing the statement of grounds of appeal under Article 108, third sentence, EPC that there could be legal certainty as to the filing of an appeal.
However, if the board considered that no admissible appeal had been filed by the patent proprietor, it was accepted that this had, in view of the principle of prohibition of reformatio in peius, consequences as to which claim requests could be permissibly pursued.
Admission of documents D15 and D16
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Inventive step - claim 1 of auxiliary request 10
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Sufficiency of disclosure - auxiliary request 10
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XII. The parties' final requests were the following:
- The opponent requested that the decision under appeal be set aside and the patent be revoked in its entirety.
- The patent proprietor requested that the decision under appeal be set aside and that the patent be maintained in amended form on the basis of any of the claim sets filed with the statement of grounds of appeal as auxiliary requests 10, 11, 13 and 15, auxiliary request 10 being the request held allowable by the opposition division.
XIII. At the end of the oral proceedings, the board's decision was announced.
Reasons for the Decision
1. The opponent's appeal complies with Articles 106 to 108 and Rule 99 EPC and is therefore admissible.
2. Patent proprietor's appeal
No appeal was validly filed by the patent proprietor. The appeal fee was duly paid, but nothing had been received within the two-month time limit under Article 108, first sentence, EPC which could be considered a notice of appeal.
2.1 Mere payment of the appeal fee within the two-month time limit under Article 108, first sentence, EPC does not constitute the valid filing of an appeal.
According to Article 108, first sentence, EPC, notice of appeal has to be filed within two months of notification of the decision. The second sentence of this provision stipulates that notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid.
It clearly follows from the wording of Article 108, first and second sentences, EPC that filing notice of appeal and payment of the appeal fee are two distinct requirements, each of which has to be fulfilled separately (see also T 778/00, OJ EPO 2001, 554, point 2.2 of the reasons). This did not change in the course of the revision of the EPC in the year 2000 (see also T 861/12, point 4.4.1 of the reasons; Special edition No. 4, OJ EPO 2007, pages 100, 120), in contrast to, for instance, the legal remedy of further processing, which, since the entry into force of EPC 2000, can be requested by mere payment of the prescribed fee (see Article 121(1) and Rule 135(1) EPC).
Even though the board agrees with the patent proprietor in that the two acts - filing notice of appeal and paying the appeal fee - do not necessarily have to be performed via separate documents, the mere payment of the appeal fee still cannot replace the filing of notice of appeal.
2.2 The "Letter accompanying subsequently filed items" submitted on 17 March 2015 ("the letter") being the sole document received by the EPO from the patent proprietor before the expiry of the two-month time limit under Article 108 EPC, does not, however, qualify as a notice of appeal.
2.2.1 A notice of appeal is a declaration directed to the EPO of the intention to challenge a particular decision by means of an appeal. The declaration of the intent to file an appeal must be clear and unambiguous (see also J 19/90, Headnote and point 2.1.3 of the reasons; T 371/92, OJ EPO 1995, 324, point 3.5 of the reasons; J 16/94, OJ EPO 1997, 331, point 4 of the reasons; T 460/95, OJ EPO 1998, 587, 594, second paragraph; T 445/98, point 3 of the reasons; T 778/00, supra, point 2.1 of the reasons; T 377/11, point 5.1 of the reasons; T 620/13, point 5 of the reasons). This prerequisite is also reflected in Rule 99(1)(c) EPC, according to which the notice of appeal must contain a "request for defining the subject of the appeal".
The board accepts, in line with established case law, that the request under Rule 99(1)(c) EPC can be implicit. What may be implicit in this context, however, relates only to the indication of whether the impugned decision is to be set aside in whole or only in part (see also T 620/13, point 7 of the reasons with reference to T 358/08). It does not mean that a clear and unambiguous declaration of intent that an appeal is filed, constituting notice of appeal within the meaning of Article 108 EPC, is not required. Accordingly, the patent proprietor's reference to decision T 620/13 provides no support for its case.
Nor can decision T 925/91 (OJ EPO 1995, 469) be of assistance to the patent proprietor, since, in the situation underlying that decision, an explicit declaration expressing the definite intention to contest a particular decision by means of an appeal, and consequently a statement qualifying as notice of appeal, had in fact been filed ("Gegen die Entscheidung... legen wir... hiermit... Beschwerde ein"; see letter of 3 December 1991 referred to in T 925/91, point 1.1 of the reasons; translation by the board: "Against the decision ... we ... herewith file ... notice of appeal").
Furthermore, the changes introduced by the EPC 2000 revision into the provisions governing the filing of an appeal as referred to by the patent proprietor (see section XI above) did not change the concept of what constitutes notice of appeal under Article 108 EPC (see first paragraph of this point; also e.g. T 1943/09, point 4 of the reasons; T 377/11, point 5.2 of the reasons). Therefore these changes need not be further addressed.
2.2.2 The letter received on 17 March 2015 indicates the particulars necessary for the payment to be effected via debiting of the appeal fee from a deposit account in accordance with point 6.3 of the Arrangements for Deposit Accounts (in the version of 1 April 2014, Supplementary publication 4, OJ EPO 2014, 5), and provides information concerning any re-payments. In the absence of any further statement in it, the letter cannot be considered as going beyond a mere debit order.
In particular, the letter does not represent a clear and unambiguous declaration of intent that an appeal is being filed at the moment of its submission. Considered objectively from the point of view of the adverse party, the EPO and the public, the sending of a debit order for the payment of the appeal fee implies, at most, that the party envisages filing an appeal. It still leaves the party the choice of whether, or at what point in time, to file notice of appeal as the necessary second act for an appeal to come into existence.
2.2.3 It is also established case law that filing the form for the payment of fees and costs (EPO Form 1010) or filing a "Letter accompanying subsequently items" that contains nothing more than a debit order for the payment of the appeal fee does not qualify as filing notice of appeal (see in particular J 19/90, Headnote; T 371/92, supra, point 3.6 of the reasons; T 445/98, point 3 of the reasons; T 778/00, supra, points 1 and 2.4 of the reasons). Further, it has been explicitly confirmed in decisions analysing the EPC 2000-related changes that this case law continues to be relevant following the entry into force of the EPC 2000 (see T 1479/09, point 4 of the reasons; T 1943/09, point 4 of the reasons; T 377/11, point 5.2 of the reasons; T 861/12, point 4 of the reasons).
2.2.4 In contrast to the patent proprietor's opinion, it is of no relevance to the present case that the board's registrar had been able to identify the letter as associated with a potential appeal, which resulted in the issuance of EPO Form 3204 informing the parties of the commencement of proceedings before the board and the allotted appeal number. This is the sole, stated purpose of this communication. In no way does such a communication reflect on whether or not an appeal has been validly filed or is well founded (see also T 620/13, point 6 of the reasons; J 5/15, point 2 of the reasons).
2.2.5 It is true that where notice of appeal has been filed, it is only after expiry of the four-month time limit for filing the statement of grounds of appeal pursuant to Article 108, third sentence, EPC, that there can be legal certainty as to whether there might be an admissible appeal. However, it is not this kind of consideration which matters here. It is simply the application of the legal concept as established by the EPC legislator for the initiation of admissible appeal proceedings (as to the legislative history, see T 778/00, supra, point 4 of the reasons).
3. Referral G 1/18
Even though the appeal fee had been paid on time, no notice of appeal was filed by the patent proprietor within the two-month time limit under Article 108, first sentence, EPC. Thus, the patent proprietor's appeal did not come into existence and, accordingly, the patent proprietor's appeal is deemed not to have been filed.
3.1 When making its decision, the board was well aware of a point of law referred to the Enlarged Board of Appeal and pending as referral G 1/18. The referred question comprises several alternatives one of them directed to the issue of whether the filing of the notice of appeal after expiry of the two-month time limit under Article 108 EPC results in the appeal being inadmissible or deemed not filed.
The present case may be considered as falling under this alternative because the patent proprietor's statement of grounds of appeal comprises all the necessary elements of a notice of appeal pursuant to Article 108, first sentence, and Rule 99(1) EPC, and thus it can be said that notice of appeal was filed late.
Where a referral under Article 112(1) EPC is pending before the Enlarged Board of Appeal and the outcome of an appeal case entirely depends on the outcome of the referral, a board can stay its proceedings at the request of a party or ex officio. Even though there is no explicit legal provision in this regard, the board considers it as established practice amongst the boards of appeal that a stay of proceedings may, inter alia, be based on considerations relating to the binding effect of opinions or decisions of the Enlarged Board as provided for in Article 21 RPBA and a uniform application of the law.
In the present case, the board did not stay the appeal proceedings because the outcome of the case did not depend entirely on the outcome of the referral - except for the question of whether the board's order regarding the patent proprietor's appeal was correct. Whether the patent proprietor's appeal is to be considered as inadmissible or deemed not filed leads, in both situations, to the same procedural consequence, which is that the patent proprietor is limited to defending the patent in amended form as considered allowable by the opposition division.
The point in relation to which the outcome of referral G 1/18 is indeed relevant concerns the question of the refund of the appeal fee paid by the patent proprietor (see point 3.2 below). However, the board's decision is favourable for the patent proprietor, who is the sole person concerned by this question. No other person - be it the opponent or any third party - can be affected by the outcome of the board's decision on the refund of the patent proprietor's appeal fee. Furthermore, neither of the two parties to the proceedings had requested a stay of proceedings in view of referral G 1/18, nor had they any objections to the way the board intended to proceed as indicated at the oral proceedings.
3.2 The board bases its conclusion, which is that the patent proprietor's appeal should be deemed not to have been filed, on Article 108, first and second sentences, EPC read together (see also J 16/82, OJ EPO 1983, 262, point 9 of the reasons; T 778/00, supra, point 2.2 of the reasons). Only notice of appeal filed on time can trigger the falling due of the appeal fee pursuant to Article 4(1) RFees, payment of which in turn leads to the consequence that the notice of appeal is deemed filed. Accordingly, for an appeal to come into existence, in the board's opinion the two acts - filing notice of appeal and payment of the appeal fee - must take place within the two-month time limit under Article 108 EPC. If, as in the present case, the notice of appeal is filed after expiry of the two-month time limit, it cannot be deemed to have been filed because the appeal fee, even if paid within the two-month time limit, has not in fact fallen due in the absence of notice of appeal being filed on time. Thus, the appeal fee has been paid without a legal basis.
Non-compliance with any of these two requirements leads, in the board's opinion, to a finding of the appeal being deemed not filed and to a corresponding order by the board (see also T 445/98, point 5 of the reasons).
The legal consequence of the appeal being deemed not filed is defined in Article 108 EPC itself. Rule 101(1) EPC, which provides for a rejection of an appeal as being inadmissible, is construed by the board as relating to situations in which an appeal had already come into existence (i.e. decision T 489/93, point 9 of the reasons, is not followed by this board).
4. Admission of document D15 - Article 12(4) RPBA
Document D15 was filed by the opponent with the statement of grounds of appeal in order to prove that document D5 was publicly available at the priority date of the patent in suit. The patent proprietor objected to the admission of D15, asserting that it should have been filed with the notice of opposition, anticipating that the publication date of D5 would be challenged.
The board cannot agree with that view and considers that the filing of D15 was an appropriate reaction to the appealed decision, where the opposition division had disregarded D5 because it had not been convinced that the document was available at the priority date of the patent in suit. The opponent had, with its notice of opposition and together with document D5, also filed document D5', submitting that document D5 had not only been made available at a conference in Warsaw 23-26 November 2004 but also that an equivalent document had been made available at the ICE 2004 conference in Chicago on 27-29 October 2004. The patent proprietor, however, only questioned the prior-art status of document D5 on the final date for making written submissions before the oral proceedings in opposition, even though in the notice of opposition D5 had been presented as a highly relevant document for both novelty and inventive step. It thus cannot be concluded that the opponent should have filed D15 during opposition proceedings.
In view of the considerations above, the board saw no reasons to disregard document D15 under Article 12(4) RPBA and, hence, it was admitted into the proceedings.
5. Document D5 - prior art under Article 54(2) EPC
In view of documents D5', D5'' and D15, the board is convinced that document D5 was made available to the public at the ACT '04 conference held in Warsaw 23-26 November 2004, i.e. before the priority date of the patent in suit.
Document D5, first page, mentions the title and the authors and has, inter alia, the following indications: "Advances in Coatings Technology ACT '04", "Paper 36", "23-26 November 2004, Warsaw, Poland". Document D5'' contains the table of contents of the conference papers for ACT '04, and lists on page 6 the title and the authors of document D5 as paper 36. The first page of D5'' indicates the title of the document ("Advances in Coatings Technology", "ACT '04", "Conference Papers"), and the same place and dates as document D5. That the latter information represents not only the date and place of the conference event but also the time and place of publication is confirmed by document D15. This is a declaration signed by Ms Pajak in her capacity as Chair of the Organising Committee of the ACT '04 Conference. Ms Pajak confirms therein that the conference papers from the 6th International Conference ACT '04 had been available to the participants on the dates of the conference, which was held on 23-26 November 2004 in Warsaw. From document D5' it is further derivable that a paper with the same title and the same authors as document D5 had been presented at the ICE 2004 conference in October 2004 in Chicago.
The patent proprietor referred to the fact that document D15 was not a sworn declaration. However, there is no requirement under the EPC with regard to the kind of evidence a party is allowed to submit. Article 117(1) EPC lists various means of evidence in a non-exhaustive manner, and it is for a party to submit the evidence on the basis of which its assertions would have to be assessed, if necessary. In the circumstances of the present case, the board had documents D5, D5', D5'' and D15 as a basis on which to consider the opponent's assertions.
Accordingly, the content of document D5 forms part of the state of the art within the meaning of Article 54(2) EPC.
6. Admission of document D16 - Article 13(1) RPBA
Document D16 is an experimental report with comparative examples filed by the opponent after the four-month period for replying to the patent proprietor's statement of grounds of appeal.
The filing of document D16 therefore represented an amendment of the opponent's case, and the admission of the document into the appeal proceedings is at the board's discretion, taking into account, inter alia, the complexity of the new subject-matter submitted, the state of the proceedings and procedural economy. The clause in the opponent's statement of grounds of appeal in paragraph 3, page 7, which states that it reserved the right to later provide, if needed, experimental support for the line of argument by submitting comparative results to demonstrate that the technical problem had not been solved, has no impact on the consideration of there being an amendment to the opponent's case. It is not only a general, unspecific statement, but also a conditional one, leaving it completely open whether experimental data would be filed at all.
Document D16 was filed 10 months after the opponent's statement of grounds of appeal and five months after the patent proprietor's reply to that statement. By that time, no change in the appeal proceedings had occurred which justified the filing of further comparative examples. The lack of resources invoked by the opponent for filing D16 at that late stage cannot be considered as a convincing reason, as this was related to the opponent's internal priority setting and was thus a matter of deliberate choice on its part.
Moreover, the opponent itself considered the data in document D16 as complementary. The data were therefore regarded by the board as no more relevant than the opponent's submissions already on file.
In view of the considerations above, the board, exercising its discretion under Article 13(1) RPBA, decided not to admit document D16 into the appeal proceedings.
7. Amendments - claim 1 of auxiliary request 10
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For this reason, claim 1 of auxiliary request 10 does not add subject-matter (Article 123(2) EPC).
8. Inventive step - claim 1 of auxiliary request 10
8.1 Claim 1 of auxiliary request 10 is directed to the preparation of a powder coating composition comprising a polyester resin, a dispersant, a pigment and a crosslinker, which is characterised by the fact that the dispersant is added to the polyester resin just before or at the end of the resin synthesis. According to the patent in paragraphs [0006] and [0046], this process results in powder coating compositions with improved flow and improved or at least equivalent haze and gloss.
8.2 In the appeal proceedings, the opponent assessed inventive step starting from document D5 as the closest prior art. The patent proprietor did too, following the board's finding that D5 belonged to the prior art. The board saw no reason to take a different stance.
D5 discloses rheology studies and final coating properties of three powder coating compositions comprising, among other things, the ingredients recited in present claim 1: a polyester resin (Uralac P815), a dispersant (A, B or Solplus L300), a pigment (Carbon Black FW200, Kronos 2310 or Paliotan Yellow L1945), and a crosslinker (Araldite PT910 or Primid XL552) (see Tables 3.1, 4.1, 5.1 and 5.2). The compositions were prepared by premixing in a tumble mixer, extruding, and milling the extrudate (see section 2.2). The results reported in section 6 revealed that the use of a polymeric dispersant reduces the compositions' viscosity and improves their dispersion and gloss.
8.3 The process in claim 1 differs from the one in D5 in that the resin is prepared in situ and the dispersant is added to the resin just before or as the resin leaves the synthesis reactor; in D5, the preparation process does not involve the synthesis of the resin in situ and the components are all mixed together without the resin being previously combined with the dispersant.
8.4 The technical problem to be solved, as defined in paragraphs [0006] and [0046] of the patent, is the preparation of powder coating compositions with improved flow, without deteriorating the haze and gloss. The solution proposed is the process defined in claim 1.
8.5 The board is satisfied that the process in claim 1 effectively solves the problem posed, as demonstrated by the examples in the patent.
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8.5.3 The opponent also argued that comparative examples A-2 to F-2 did not exactly reproduce the compositions of D5 and therefore did not provide a valid comparison with the closest prior art.
The board disagrees. [...]
Therefore, the board cannot agree with the opponent that the process of claim 1 was obvious from the disclosures in documents D5 and D7, taken alone or in combination.
8.7 In the appealed decision, the opposition division had considered the disclosures in documents D2 and D3 as the closest prior art and come to the conclusion that the process in claim 1 of auxiliary request 10, which is identical to the process in present claim 1, was inventive. During the appeal proceedings, the opponent did not contest the opposition division's approach starting from D2 or D3 and presented inventive-step objections starting from the disclosure in document D5 only. Hence, the board has no reason to review the opposition division's finding on inventive step starting from the disclosures in document D2 or D3.
8.8 Having regard to the above, the board concludes that the process in claim 1 of auxiliary request 10 is inventive (Article 56 EPC).
9. Sufficiency of disclosure - auxiliary request 10
The opponent contended that the skilled person was not able to reproduce the claimed process due to [...]
The board does not share the opponent's viewpoint. [...]
In conclusion, at the effective date, the skilled person was able to prepare a powder coating composition by the process defined in claim 1 without undue burden. Hence, the invention as defined in auxiliary request 10 is sufficiently disclosed (Article 83 EPC).
10. Having regard to the above, the board has no reason to set aside the opposition division's decision that the patent as amended in the form of auxiliary request 10 and the invention to which it relates meet the requirements of the EPC. Hence, the opponent's appeal is to be dismissed.
11. Reimbursement of the patent proprietor's appeal fee
As no notice of appeal had been received from the patent proprietor within the two-month time limit under Article 108, first sentence, EPC, the corresponding appeal fee did not fall due pursuant to Article 4(1) RFees. Thus, the appeal fee was paid without a legal basis and must therefore be refunded (see also e.g. T 778/00, supra, point 6 of the reasons).
Order
For these reasons it is decided that:
1. The patent proprietor's appeal is deemed not to have been filed.
2. The opponent's appeal is dismissed.
3. The patent proprietor's appeal fee is to be reimbursed.
This decision T 551/15 (pdf) has European Case Law Identifier ECLI:EP:BA:2019:T055115.20190214. The file wrapper can be found here. Photo "Jackpot" by A. Vandalay obtained via Flickr under CC BY 2.0 license (no changes made).
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