Tuesday, January 31, 2017 T 648/15 - Can't appeal and bound by reformatio in peius; No way out?

Can't appeal and bound by reformatio in peius; No way out? 

Only the opponent filed an appeal against the decision of the opposition division to maintain a patent in amended form. The main request of the proprietor was granted, so that he couldn't appeal. 

During the proceedings, the board of appeal finds a clarity problem in the amendments allowed in first instance. The proprietor invokes the exceptions to the prohibition of  reformatio in peius of G1/99 to defend the admissibility of his auxiliary requests. This is interesting since G1/99 only refers to Article 123, not to  Article 84. The board still allows it. 

Tuesday, January 19, 2016 T 399/13 - No why, so inadmissible

When filing the appeal against the decision from the Opposition Division, the appellant filed three new sets of amended claims and arguments as to their allowability, but did not give a reasoning why the appealed decision was wrong. Without this necessary link between the contested decision and the statement of grounds, the appeal was held inadmissible by the Board.

Thursday, August 06, 2015 T 0562/13 - Missing opponent in appeal

An opponent is allowed by the board to correct his appeal by including his joint opponent. 

The opposition had been filed by two joint opponents. Later, only one of the two files an appeal against the decision of the opposition division. Before the Oral Proceedings, the board brings this issue to the attention of the parties, informing them that 'the admissibility of the appeal (...) is at stake'.


The opponent-appellant submits a request for correction and to include the other opponent in the appeal under Rule 101(2). This request is allowed, even though the request is filed less than 1 month before the Oral Proceedings in the appeal case. 


Reasons for the Decision

1. Admissibility of the appeal

1.1 The notice of appeal against the decision of the Opposition Division, filed with letter of 19 February 2013 in Dutch (together with an English translation), was expressly "on behalf of the opponent, Unilever N.V.".

According to the Representative's statement in its letter dated 27 May 2015 (supra), this notice of appeal was however to be meant to have been filed on behalf of both opponents.

1.2 The Respondent did not comment on this issue.
 
1.3 It is undisputed that in opposition proceedings Unilever N.V. and Unilever PLC acted as joint opponents and were jointly represented by Mr Kan.

1.4 According to the reasoning given in decisions G 3/99 (OJ EPO 2002, 347) and R 18/09 of 27 September 2010, an opposition filed by several persons in common is to be dealt with as an opposition filed by only one party, and such a group of common opponents is to be considered as a single party represented by a common representative (G 3/99, Reasons, 14 and 15). Should such a group of common opponents intend to file an appeal, they can only do so jointly as a single party acting through their common representative (G 3/99, Reasons, 17; R 18/09, Reasons, 5).

1.5 G 3/99 furthermore states (Order, 3) that "[i]n order to safeguard the rights of the patent proprietor and in the interest of procedural efficiency, it has to be clear throughout the procedure who belongs to the group of common opponents or common appellants. If either a common opponent or appellant (including the common representative) intends to withdraw from the proceedings, the EPO shall be notified accordingly by the common representative or by a new common representative determined under Rule 100(1) EPC in order for the withdrawal to take effect" (emphasis added).

1.6 In the present case the EPO has not received any notification by the common Representative of Unilever N.V. and Unilever PLC that Unilever PLC intended to withdraw from the proceedings.

1.7 No arguments or any proof pointing to the contrary have been submitted by the Respondent either.

1.8 The facts and evidence at hand, including the statement by the joint Representative, convincingly lead the Board to the conclusion that it was the Appellants' true intention to file the appeal jointly by both Opponents, i.e. Unilever N.V. and Unilever PLC, thus as joint Appellants.

1.9 However, the notice of appeal does not reflect or express this true intention of the parties on whose behalf it was intended to be filed. In other words, the notice of appeal omits the designation of Unilever PLC. In this respect, a correction under Rule 101(2) EPC as referred to in G 1/12 (OJ EPO 2014, A114) has been requested by the Representative of the joint Opponents.

1.10 Hence, the Board considers it necessary, for both Opponents, Unilever N.V and Unilever PLC, to continue acting through the common Representative before the EPO as joint Appellants, that the file be corrected, in line with G 1/12, so as to mention both Opponents as joint Appellants, i.e. to clarify or introduce what was originally intended in the notice of appeal.

1.11 The appeal is consequently admissible.

 This decision T 0562/13 (pdf) has European Case Law Identifier: ECLI:EP:BA:2015:T056213.20150624. The file wrapper can be found here. Cartoon "Join, or Die" by Benjamin Franklin, obtained from DonkeyHotey via  Flickr under CC BY 2.0 license (no changes made).

Friday, April 17, 2015 T 0887/11: an exception to the prohibition of reformation in peius

I rarely see that the principle of prohibition of reformatio in peius (G 1/99) is discussed in appeal proceeding. In T 0887/11 this is an important point of the discussion between the parties. This appeal extends from a decision of the Opposition Division. The Opposition Division decided that the patent could be maintained with amended claims. The Opponent filed the appeal (appellant)

The main message of G 1/99 was "In principle, an amended claim, which would put the opponent and sole appellant in a worse situation than if it had not appealed, must be rejected." It seems to be a fair principle which provides some security to the appellant. After this general principle, the Enlarged Board of Appeal discusses an exception to this principle: " However, an exception to this principle may be made in order to meet an objection put forward by the opponent/appellant or the Board during the appeal proceedings, in circumstances where the patent as maintained in amended form would otherwise have to be revoked as a direct consequence of an inadmissible amendment held allowable by the Opposition Division in its interlocutory decision. (...)". 
A first line of reasoning of the Board of Appeal is that the appellant is not in a worse position because a deleted feature in claim 1 of auxiliary request 3A "did not imply any clear structural limitation to the claimed subject-matter". Then the decision becomes a little confusing because, although it seems that there is no reformatio in peius, the Board discusses (most probably for sake of completeness) that the above discussed exception to the principle of prohibition of reformation in peius also applies to this case.