Wednesday, March 07, 2018 T 0611/15 - No pain, no gain

In this opposition appeal, the Proprietor appealed the decision of the Opposition Division to maintain the patent in amended form. The joint opponents also appealed this decision, but did not attend oral proceedings. Also party to the appeal proceedings were two assumed infringers, in the capacity of interveners.

The Proprietor requested that the patent be maintained as granted (main request), auxiliarily that the decision under appeal be set aside and the patent be maintained in amended form on the basis of the first auxiliary request filed in during first instance proceedings, or on the basis of the request found allowable by the Opposition Division (second auxiliary request). The Proprietor further requested that the patent be maintained on the basis of the claims of one of the third to fifth auxiliary requests filed during the oral proceedings.

However, during the oral proceedings the Interveners submitted that it is evident from the contested decision and the minutes of the oral proceedings before the Opposition Division that the Proprietor had withdrawn the main request and first auxiliary request, maintaining the second auxiliary request as the sole request. As the contested decision was favourable in respect of this sole request, the Proprietor was not adversely affected by the decision and consequently the Proprietor's appeal is to be rejected as inadmissible, Article 107 EPC and Rule 101(1) EPC. Furthermore, as the Proprietor's appeal is not admissible, the main and first auxiliary requests submitted in the appeal proceedings are not admissible in view of the principle of reformatio in peius. 

The Interveners further argued that in each of the third to fifth auxiliary requests the respective claim 1 prima facie gave rise to new clarity objections under Article 84 EPC which neither they nor the Board could reasonably be expected to deal with without adjournment of the oral proceedings.

The Board essentially went along with the Interveners' submissions. As a result, during the oral proceedings the proprietor was merely able to defend his second auxiliary request - i.e., the request found allowable by the Opposition Division.

Wednesday, May 24, 2017 T 540/13 - Impossible to establish whether facts or arguments were filed or not

The opposition division had informed opponent O1 that "The notice of opposition contains no statement of grounds on which the opposition is based (Rule 76(2)(c) EPC)" and that "the notice of opposition will be rejected by the opposition division as inadmissible...". The opposition division issued a decision revoking the European patent as the ground for opposition pursuant to Article 100(c) EPC prejudiced the maintenance of the patent as granted. In addition to revoking the patent, the title page of the decision states: "Additional decision: The opposition of the opponent(s) O1 is rejected as inadmissible". Appeals were filed by the patent proprietor and opponent O1.  In its statement of grounds of appeal, appellant-opponent O1 requested that "the decision of the Opposition Division that rejected Opponent O1's opposition on grounds of inadmissibility pursuant to Rule 77 EPC be set aside and that Opponent O1's opposition be considered admissible". The Opponent argued that the facts and arguments in support of the grounds for opposition required by Rule 76 EPC were included in the DHL package that was timely filed within the opposition period, whereas the opposition division held that "Facts and arguments substantiating the indicated grounds for opposition have not been filed within the opposition period. Even the paper confirmation received on 4 October 2007 ... did not comprise facts and arguments, as has been confirmed by file inspection". How did the Board deal with these opposite positions of Opponent O1 and the opposiion division? And how did this effect the party status of the Opponent?

Friday, September 18, 2015 T 327/13 - Standing and falling as a whole

This opposition appeal is against the Opposition Division's decision to maintain claim 3 as granted (in the context of claim 1 of auxiliary request 1). The appellant considered himself to be adversely affected as by the Opposition Division's decision not to maintain claim 2 as granted. Of relevance in the present case is that claim 2 as granted was not the subject of an individual request in the opposition proceedings, but rather only included as a dependent claim in the main request.

Summary of Facts and Submissions

III. The Opposition Division held that the patent proprietors' main request could not be allowed because the subject-matter of amended claim 1 lacked novelty over D1, but that, account being taken of the amendments in the patent proprietors' auxiliary request 1, the patent and the invention to which it relates meet the requirements of the EPC.

IV. This interlocutory decision has been appealed by the patent proprietors (in the following "the appellants").

(...)

IX. The written and oral arguments of the appellants, insofar as they are relevant for the present decision, can be summarised as follows:

The Opposition Division's decision to maintain claim 3 as granted (in the context of claim 1 of auxiliary request 1) is not challenged; however, the appellants are adversely affected by the Opposition Division's decision not to maintain claim 2 as granted, although its subject-matter is novel and inventive in view of D1 (WO 00/35614 A1, filed with the notice of opposition and cited in the decision under appeal).

Clearly the appellants are adversely affected by the Opposition Division's decision to dismiss their main request. It also follows from T 528/93 that, only when a request is withdrawn during the opposition proceedings and re-filed in appeal, is the appellant not adversely affected by the decision of the Opposition Division as far as this request is concerned. In the present case, the appellants did not withdraw their main request and thus, following the reasoning of T 528/93, they are adversely affected by the decision of the Opposition Division to dismiss it.

It is established case law, see for instance T 760/08 (point 2 of the reasons) and T 1708/08 (point 1.3 of the reasons), that the statement of the grounds for appeal satisfies the requirements of Article 108 EPC, third sentence, even if it does not state any specific reason why the decision is contested, provided there is a change in the subject of the proceedings due to the filing of new claims and where the reasons for the decision are no longer relevant in view of the new claims. The appellants filed two new sets of claims which remedy the deficiency of the appellants' main request as identified by the Opposition Division in its decision. Thus, the appeal should be considered as being sufficiently substantiated.

Friday, June 05, 2015 T 445/08 - True intentions to be confirmed

This appeal is the referring case of G 1/12, and shows the Board applying the answers of G 1/12.

Catchwords:

• If the notice of appeal is to be considered in the context of the file history, the true intention needs to be confirmed by external facts and evidence at least to prevent that requirements such as those of Article 107 EPC be circumvented (point 9).
• In applying Rule 139 EPC to a party's request to correct a mistake in the notice of appeal in respect of the identity of the appellant, the principle of legal certainly needs to be taken into consideration (point 10).

Background / Summary of Facts and Submissions

I. The appeal lies from the decision of the Opposition Division, posted on 28 December 2007, revoking European patent No 1140330.

II. The (registered) patent owner was Zenon Technology Partnership, The Corporation Trust Company Corporation Trust Centre 1209 Orange Street, Wilmington, DE 19801/US (the patent had been acquired from Zenon Environmental Inc, 845 Harrington Court Burlington Ontario L7N 3P3 Canada, by an assignment registered by the EPO on 30 May 2006).

III. A notice of appeal, dated 8 February 2008 but received on 15 February 2008, was filed, reading:

"European Patent No 1140330 (99955620.2-062)

Zenon Technology Partnership

We hereby give Notice of Appeal (underlined by the Appellant) against the decision of the Examination Division [sic] dated 28 December 2007 to refuse the above patent application [sic]. Cancellation of the decision in its entirety is requested so that the patent may be maintained?.

The name, address and nationality of the Appellant is (emphasis by the Board):

ZENON ENVIRONMENTAL INC

845 Harrington Court

Burlington

Ontario L7N 3P3

Canada

ZENON ENVIRONMENTAL INC is a Canadian Corporation.

In the event that the Board of Appeal wishes to make a decision detrimental to the Applicant's [sic] rights at any time, it is hereby requested that Oral Proceedings be held to discuss the matter."

The procedural steps after the filing of the notice of appeal

IV. On a communication dated 7 March 2008 notifying the parties of the commencement of the appeal proceedings, the Registrar of the Board added the following handwritten statement: "the appeal was filed in the name of ZENON ENVIRONMENTAL INC (underlined by the Registrar). The patentee is here registered as ZENON TECHNOLOGY PARTNERSHIP (underlined by the Registrar). Therefore the patentee is asked to clarify the situation."

V. The Appellant and the Respondent both reacted with letters dated 13 March 2008.

The Appellant wrote "... the appeal should of course have been filed in the name of the current proprietor, i.e. Zenon Technology Partnership (underlined by the Appellant). I apologise for the confusion and respectfully request the correction".

The Respondent requested that the appeal be rejected as inadmissible, as it had been lodged by a legal entity other than the adversely affected (entitled) party.