Tuesday, May 21, 2019 T 314/15 - Wrong/no place of business on notice of appeal: (in)admissible?

In the present case, a notice of appeal by facsimile was received at the EPO on 9 February 2015, carrying at the top of its first page the letterhead "MAN Truck & Bus AG", and below the addressee a line containing various references including inter alia an indication that the letter was written on that same date in Nürnberg, followed by a paragraph designating the number of the above European patent and its underlying application, the name of the patent proprietor and the name of the opponent as "MAN Truck & Bus AG". In the subsequent paragraphs it is declared, with reference to the impugned interlocutory decision, the European patent and its proprietor, that an appeal was filed. A list of requests and a statement concerning the payment of the appeal fee by debit order submitted in the annex completed the letter which was signed by an employee of MAN Truck & Bus AG together with a reference to an EP authorisation 58 1060.1. The letter's footer contains in a left column an indication of inter alia the place of business being München and in a right hand column, a postal address of the company MAN Truck & Bus AG in Nürnberg. In response to a communication pursuant to Rule 101(2) EPC, sent to MAN Truck & Bus AG at its postal address in Nürnberg and stating that the notice of appeal did not contain the address of the appellant and requesting the deficiency be remedied within a period of two months. the address of appellant-opponent was provided, corresponding to the address indicated by opponent in the notice of opposition. It was requested that all correspondence be sent to the Nürnberg postal addres. 
Thus, the notice of appeal of appellant-opponent did not contain the address, contrary to the requirement of Rule 99(1)(a) EPC, but the address of its principle place of business (Sitz) was provided later (together with an address from the company, other than its principle place of business, as address of correspondence). Did the Board consider the appeal admissible in view of Rule 99(1)(a) EPC?

Tuesday, March 05, 2019 T 0831/17 - Haar? Referral. [G 2/19]

A highly intriguing referral to the Enlarged Board, for multiple reasons: it concerns questions regarding the extent of the right to be heard (by a third party) and regarding the proper venue of oral proceedings (in the light of the much-debated relocation of the Boards of Appeal to Haar).

In the present case, during examination proceedings of EP2378735 third party observations (containing objections under Art. 84 EPC) had been filed by private practice firm Jostarndt Patentanwalts-AG. The patent was nevertheless granted. Jostarndt then lodged an appeal against the decision to grant, essentially arguing that, since clarity is not a ground for opposition, it felt deprived of its opportunity to object under Art. 84.

However, the Board found itself bound by the EPC - which only allows an adversely affected party to the proceedings to appeal, the author of third party observations according to Art. 115 EPC not being a party to the proceedings - and deemed the appeal inadmissible.

The appellant saw an unacceptable hiatus in legal protection and demanded clarification of this fundamental question by a decision. It therefore requested oral proceedings on the above question of admissibility.

Surprisingly, after having been summoned on 25 January 2019 for a hearing in the premises of the Board of Appeal in Haar, the appellant then requested transfer of these oral proceedings to Munich, arguing that the European Patent Office is headquartered there and, unlike The Hague, Haar is "not evidently intended as a place for acts or proceedings" in the European Patent Convention.

The move in 2017 of the Boards of Appeal from the Munich Isar building to the municipality of Haar - in a manifest attempt to increase the perceived independence of the Boards of Appeal - was met with dismay and criticism from both the Boards themselves and the public. 

The present Board (3.5.03) considered in particular the question of the right venue of the Boards of fundamental importance for ensuring a uniform application of the law in all appeal proceedings, and decided to refer the following questions (loosely translated from the original German wording) to the Enlarged Board:

(1) In appeal proceedings, is the right to oral proceedings under Article 116 EPC restricted if the appeal is prima facie inadmissible?

(2) If the answer to Question 1 is yes, is an appeal against the decision to grant a patent prima facie inadmissible in this sense, which Appeal has been filed by a third party within the meaning of Article 115 EPC and which has been substantiated by arguing that there is no alternative remedy under the EPC against a decision of the Examining Division not to consider the third party’s objections concerning the alleged contravention of Article 84 EPC?

(3) If the answer to one of the first two questions is no, can the Board hold oral proceedings in Haar without violating Article 116 EPC, if the appellant complains that this location is not in conformity with the EPC and requests that the oral proceedings be moved to Munich?

Questions 1 and 2 are interesting for querying the extent of the right to be heard in proceedings before the EPO. Question 3 is likely to have the greatest impact, as it boils down to whether the President or the Administrative Council of the European Patent Organisation had the power to relocate the Boards (or departments of the Office within the meaning of Article 15 EPC in general) outside the locations mentioned in Art. 6(2) EPC or to whether "Munich" in Art. 6(2) should be interpreted merely as the city with that name (not including Haar) or a (not well-defined) greater Munich area. It would appear that the referring Board favors a more a strict interpretation of “Munich”.

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, January 25, 2017 T 1205/13 - A request that was not decided upon

In the summons to oral proceedings before the Examining Division, the Examining Division objected under Art.56 EPC (inventive step). The applicant then replaced those claims with two new sets, which were refused because of deficiencies under Art.123(2) and 84 (extension of subject-matter and clarity) caused by the amendments. In appeal, the applicant filed the original claims as main request. What did the Board do? No decision was taken in first instance about this claim set, as the applicant replaced them before a decision could be taken - the applicant was adversely affected by the refusal, but the refusal related to the replaced claim. Also, the refusal was based on Art. 123(2) and 84, and not on Art. 56 that the Examining Division held against these claims in its preliminary opinion.

Thursday, June 16, 2016 T 1325/15 - Inadmissible or simply not filed?

Appeals!

This appeal revisits the question whether an appeal is to be found inadmissible or deemed not to have been filed if the notice of appeal is filed within the time limit, while the appeal fee is paid only after expiry of the time limit for filing the notice of appeal.

It is recalled that Article 108 EPC, second sentence, reads "Notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid", without explicitly specifying that the fee for appeal should have been paid on time, i.e., within the applicable time limit.

The issue had already been referred to the Enlarged Board of Appeal by T 2017/12 and T 1553/13, without either referral resulting in an answer.

The Board's conclusion is in line with the established practice: the late filing of a document is treated in the same way as its non-filing. As such, the appeal is deemed not to have been filed by the Board.

Catchwords: See points 34 to 43 of the reasons

Tuesday, April 19, 2016 T 2227/11 - Filing a backup appeal

A recurring problematic situation is the calculation of the appeal due dates in case the examining division corrects its refusal decision. We had this situation last month in T 105/11, where the applicant understandably (but incorrectly) took the corrected decision to compute the appeal time limits. 

Also in this case, the EPO issued a corrected decision. Apparently to be on the safe side, the applicant files two appeals, one against each decision, and also pays the appeal fee for both appeals. As a result, the EPO (incorrectly) refunds the appeal fee for the first appeal, and informs the applicant (incorrectly) that he ought to take the second decision for computing his time limits. 

This puts last month's decision in a new light, in which the Board hesitantly accepted the belated appeal as admissible because "the professionally represented appellant should have been aware" (R.1.8). Apparently, it is not so simple.

Another interesting aspect of this decision are two internet disclosures D1 and D2, which the applicant disputes are state of the art. The applicant considers that such disclosures, should be proved beyond any reasonable doubt (citing T 1134/06). The board does not accept this, and considers balance of the probabilities sufficient.

Tuesday, September 22, 2015 T 2001/14 - No requests, application refused

This decision shows that filing amended claim sets after receiving an intention to grant R.71(3) is not without risk.

After the applicant had received the intention to grant based on a claim set filed during oral proceedings, new requests were filed.

The Examining division did not allow these new claims and refused to issue new oral proceedings; "without an allowable request on file, the application shall be refused under Article 90(5), Rule 137(3)".

The applicant appealed the decision to refuse and filed a main and two auxiliary requests.  The second auxiliary request is identical to the claims for which the R.71(3) was issued.

The statement of grounds does not discuss Rule 137(3); That is, the statement of grounds does not question if the Examining division was correct not to allow the new auxiliary requests in to the proceedings. The board is tempted to refuse the appeal on this basis as the appeal is unsubstantiated. 

The current version of R.71 is applicable in this case.


Reasons for the Decision

1. Admissibility of the appeal

Friday, January 30, 2015 T 1101/14 - Don't put the blame on your secretary, if you as a representative failed yourself!

A representative  mistakenly signed a statement of grounds of appeal having most of its pages missing. As a result, the statement of grounds of appeal, did not indicate the reasons for setting aside the impugned decision or the extent to which it was to be amended - and the Board came to the preliminary conclusion that the appeal appeared to be  inadmissible. The representative tried to argue all due care, referring to the secretary's reliability (trying to put all the blame on her), but ignoring the representative's own lack of particular care when checking and signing the documents to be submitted. But: no excuses for not having checked that carefully! 

Summary of Facts and Submissions

I. The appeal lies against the decision of the examining division [...]

II. The appellant filed a notice of appeal on 31 Janu­a­ry 2014 and paid the appeal fee on the same day. On 11 April 2014, the appellant submitted, electro­nically, amended claims and description pages accor­ding to a main request and auxiliary requests 1-3, accom­panied by a letter stating the following:

"In the matter of the Appeal, we enclose herewith the Grounds of Appeal, to­gether with amended description pages and claims in re­lation to a Main Request and First to Third Auxiliary Re­quests. We request that the decision of the Examining Division be set aside in its entirety, and that a pa­tent be granted based on the application in the form of the Main Request. If the Appeal Board considers that the Main Request is not permissible, we respectfully request an opinion in relation to the allowability of the First to Third Auxiliary Requests. We request Oral Proceedings in the event that any of the Requests are not considered allow­able by the Appeal Board."

No fur­ther reasons were received with that submission, nor did the letter contain a list of intended enclosures.

III. With a summons to oral proceedings, the board informed the appellant of its preliminary opinion that the letter of 11 April 2014, which the board considered to constitute the statement of grounds of appeal, did not indicate the reasons for setting aside the impugned decision or the extent to which it was to be amended. The board therefore came to the preliminary conclusion that the grounds of appeal did not satisfy the require­ments of Rule 99(2) EPC so that the appeal appeared to be inadmissible pursuant to Rule 101(1) EPC. The appellant was also informed that the oral pro­ceedings would be limited to the question of admissibility.

IV. In response to the summons, received on 26 September 2014, the appellant argued that "the Grounds of Appeal which were filed were not the 'full' intended Grounds" and reques­ted re-establishment of the applicant's right in the application under Article 122 EPC in view of the fact that, in spite of all due care required by the cir­cum­stances having been taken, the Applicant was unable to observe the deadline for filing the grounds of appeal under Article 108 EPC.

V. In a communication dated 8 October 2014, the board in­formed the appellant that the request for re-establish­ment would be dealt with in the planned oral procee­dings and raised a number of questions. Since a sub­mission rela­ting to the grounds of appeal was re­ceived in time, it appeared questionable whether a time limit had been missed at all and therefore whe­ther the re­quest for re-establishment was admissible. The board also noted that the appellant had, in res­ponse to its electronic sub­mission, received an imme­di­ate acknow­ledge­ment of re­ceipt from which the omission of a sepa­rate document con­tai­ning the grounds of appeal should have been appa­rent. In view of this it seemed that the cause of non-compliance had been re­moved directly after trans­mission and that consequently the request for re-establish­ment was not filed within the two-month period pre­scribed by the EPC. Moreover, even if the request for re-estab­lish­ment had been made in good time, the presence of the receipt would appear to have a bea­ring on the assessment of whether all due care re­quired by the circumstances had been taken.

VI. The appellant provided further arguments in a letter dated 23 October 2014.

VII. The appellant's case, insofar as it is relevant to the present decision, can be summarized as follows.

a) By 1 April 2014, the appellant and the repre­sen­tative had come to an agreement as to which do­cu­ments were to be filed as and with the grounds of appeal.

b) On 11 April 2014, a bundle of documents was pre­pared for uploading to the electronic filing sys­tem including, in particular, a letter relating to the appeal procedure comprising a cover letter and a twelve-page annex containing the actual grounds of appeal.

c) The procedure normally followed by the represen­ta­tive and her secretary for an electronic filing con­sisted of five steps:

1. The representative would instruct the secretary which documents were to be filed.
2. The secretary would upload these documents to the local end of the electronic filing system.
3. The representative would click through every page of the uploaded documents and, once verified, electronically sign them.
4. The secretary would perform the "send" function of the electronic filing system and thus have the signed documents transmitted to the EPO.
5. The secretary would receive the electronic receipt of transmission and check whether the documents enclosed for transmission were properly transmitted.

d) This procedure was also followed in the present case. However, two errors occurred. The se­cretary failed in step ii) to upload the twelve-page annex containing the grounds of appeal, and the repre­sen­tative failed to notice in step iii) that this annex was missing before elec­tronically signing the documents for trans­mission.

VIII. The oral proceedings were held on 12 December 2014, at the end of which the chairman announced the decision of the board.

Reasons for the Decision

The admissibility of the request for re-establishment

1. According to Article 122(1) EPC, the remedy of re-estab­lishment is available to an applicant or pro­­pri­e­tor who was unable to observe a time-limit vis-à-vis the European patent office. Given that a statement of grounds of appeal was received in time on 11 April 2014, it might be considered that no time limit was missed at all.

1.1 The appellant argued that the letter received on 11 April 2014 did not constitute the grounds of appeal. This was obvious from the letter because it referred to grounds of appeal which were meant to be "enclose[d] herewith" but which were, in fact, not. The appellant also referred to Rule 99(2) EPC which required the statement of grounds of appeal to contain "the reasons for setting aside the decision impugned [...] and the facts and evidence on which the appeal is based" and argued that the submission of 11 April 2014 clearly did not contain reasons, facts or evidence. According to the appellant, therefore, no grounds of appeal were received at all and hence the time limit under Article 108 EPC for filing the grounds of appeal was missed.

1.2 The board is not convinced by the appellant's argument. Rule 99(2) EPC provides that the statement of grounds of appeal "shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amen­ded" (emphasis by the board). When an appellant does not maintain the claims as refused but files amen­ded claims, it is a priori reasonable to assume that the appellant may not want to challenge the rea­sons of decision under appeal but rather wants it to be amen­ded. Thus the absence of reasons in the letter of 11 Ap­ril 2014 does not allow the conclusion that the letter does not constitute grounds of appeal in the sense of Article 108 EPC.

1.3 However, even though something was filed within the appropriate time limit which could be understood to be the statement of grounds of appeal, the board accepts that the submission was incomplete with respect to what was meant to be filed at the time. The appellant poin­ted out that not admitting the request for re-estab­lish­­­ment would, in the present case, be tantamount to denying the appellant its access to the boards of appeal and therefore its only remedy against the deci­sion under appeal, and argued that this would be a dis­proportional consequence of the representative's pro­cedural slip.

1.4 The board agrees with the appellant that Article 122 EPC is intended to provide a remedy for the type of error that occurred in the present case.

2. According to Rule 136(1) EPC, the request for re-es­tablishment of rights shall be filed in writing with­in two months from the removal of the cause of non-com­pli­­ance with the time limit. According to the juris­pru­dence of the boards of appeal, the cause of non-compli­ance is removed on the date on which the person respon­sible for the application is made aware of the fact that a time limit has not been observed or when the per­son concerned ought to have noticed the error if all due care had been taken (see Case Law of the Boards of Appeal of the European Patent Office, 7th ed. 2013, III.E.3.1.1 a)).

2.1 The representative argues that she became aware of her error only when she received the board's communication dated 5 August 2014, so that the two months period started at that point.

2.2 The statement of grounds of appeal was filed electro­nically on 11 April 2014. In immediate response to this filing, the appellant received an acknowledgement of re­ceipt for the submitted documents (see also annex G, filed on 26 September 2014). The pertinent list men­tions a letter of appeal ("APPEAL-LETT-1.pdf") having merely two pages and, apart from that, only amended claims and description pages. In particular, receipt of a twelve-page document containing a statement of grounds was not acknowledged. The board is of the opin­ion that the omission would have been directly apparent to the representative had she checked the acknowledge­ment of receipt.

2.3 The representative has however argued that she [= the representative] does not - and is not required to - check the electronic acknowledgement of receipt, as this is a secretarial task. She explained that, according to the procedure for elec­tronic filing used in her office, the primary pur­pose of the acknowledgement of receipt is to confirm that the documents received at the EPO tally with the trans­mitted ones so that, in the case of a transmission problem, some or all of the documents can be sent again.

2.4 The board considers the electronic fi­ling procedure used in the representative's office and, in particular, the use made of the electronic re­ceipt according to that procedure, to be reasonable. There­fore, the board finds that the date on which the cause of compli­ance was removed was the date when the repre­sen­tative actu­ally learned from the board's summons to oral pro­cee­dings that the statement of grounds had been trans­mitted in­completely. As the board's summons was posted on 5 Au­gust 2014, the appellant's request for re-estab­lishment of rights filed on 26 September 2014 was made within the time-limit prescribed by Rule 136(1) EPC.

3. The request for re-establishment is therefore admissible.

The allowability of the request for re-establishment

4. The appellant has argued that, as required by the ju­ris­­prudence of the boards of appeal, the se­cre­tary was a suitable per­son, properly supervised in the task to be performed, and that the representative had exercised reasonable su­pervision over the secretary's work. Also the re­pre­sentative herself had a hitherto flawless record. Thus, the two errors were uncharacteristic and isolated mis­takes in an otherwise secure system. The appellant did not however give any specific reasons as to why the two errors had occurred in the present case.

5. The board has no doubts regarding the professional qua­lifi­ca­tions of the secretary and no reason to question the quality of her supervision by the representative or the reliability of the filing procedure as described. However, in view of the following, the question of whe­ther the secretary's mistake can be excused need not be decided in the present case.

6. The representative argued that, according to the de­scribed procedure, she clicks through every page of the docu­ments to be transmitted before she electronically signs them (see point VII c) above, step iii)). This corres­pon­ded to leafing through a paper submission page by page before signing it by hand.

6.1 The board agrees that this is a reasonable way of checking whether the representative is signing the right documents. More than that, the board considers that it is the representative's responsibility and ob­li­gation to make sure that what is signed is precise­ly what is meant to be signed.

6.2 The representative argued that she failed to spot the incompleteness in the documents she signed despite exer­cising all due care as required by the circum­stan­ces. The representative thus effectively asked the board, by way of re-establishment, to excuse the re­presentative's mistake of signing the wrong documents.

6.3 The representative referred to T 1095/06 in order to support her case. This decision dealt with the question of whe­ther "re-establishment may be possible even in the event of a culpable error on the part of the assis­tant, if the professional representative is able to show that he has chosen for the work a suitable person properly instructed in the tasks to be performed, and that he has exercised reasonable supervision over the work" so that the error can be considered "an isolated error in an otherwise satisfactory system" (see T 1095/06, reasons 5). The decision stated (reasons 6) that the pertinent jurisprudence could not "be extended to everything that can be described as an 'isolated mis­take'" and that, specifically, this jurisprudence could not "be relied on to ignore a failure to act by the professional representative himself, unless there are special circumstances which make the failure to act compatible with taking all due care."

6.4 The board notes that the representative's error is substantially inde­pen­dent of the specific procedure in place for elec­tro­nic filing, since it would arise in the same way if the representative worked on her own and without the support of a secretary.

6.5 The board need not decide whether the representative's mistake in question is in principle compatible with all due care. It notes however, that the signing of docu­ments is an act that requires particular care on the representative's part, especially when the signature relates to the last legal remedy against an adverse de­cision as is, in the present case, the appeal against the decision by the examining division to refuse the application. The board therefore considers that signing the wrong documents is incompatible with all due care unless special circumstances are in­voked which could justify the representative's mistake in a particular case, thus following the cited reasons of T 1095/06.

6.6 In the absence of such special circumstances the board comes to the conclusion that the representative did not take all due care required by the circumstances in the process of filing the grounds of appeal. The request for re-establishment in the time limit for filing the statement of grounds of appeal is therefore to be refused.

The admissibility of the appeal

7. According to Rule 99(2) EPC, the appellant, in the statement of grounds of appeal, shall in particular indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended (emphasis by the board).

7.1 The letter of 11 April 2014 contained no reasoning as to the substantive merits of the amended claims. The grounds of appeal do not specify whether the decision is challenged nor, if so, to what extent and why. They also fail to specify whether the amendments made to the claims are meant to overcome the reasons given in the decision or, if they do, why they are deemed sufficient in this respect.

7.2 This assessment, communicated to the appellant with the summons to oral proceedings, was not challenged by the appellant either in writing or orally.

7.3 Therefore, the board concludes that, due to the absence of any reasons, the letter filed on 11 April 2014 does not satisfy the requirements of Rule 99(2) EPC regar­ding the grounds of appeal so that the appeal has to be rejected as inadmissible.

Order

For these reasons it is decided that:

1. The request for re-establishment of rights is refused.

2. The appeal is rejected as inadmissible.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T110114.20141212. The whole decision can be found here. The file wrapper can be found here. Photo "Signature" by Sébastien Wiertz obtained via Flickr under CC BY 2.0 license.

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.

Friday, July 04, 2014 J 22/12 - As grant falls, opposition fails

Two appeals for the price of one: an earlier appeal filed by the proprietor against the grant of its patent and an appeal  -the subject of this decision- directed against what is purported to be a decision of the Examining Division set out in a letter dated 24 May 2012. Even though the Notice of Opposition seemed to be duely filed, well within 9 months from the date of mention of the grant, the letter stated that the Appellant's Notice of Opposition could not be considered as validly filed because the decision to grant was rectified  by the Examining Division as a result of the earlier appeal.

Summary of Facts and Submissions

I. The appeal is directed against what is purported to be a decision of the Examining Division set out in a letter dated 24 May 2012. This letter stated that the Appellant's Notice of Opposition could not be considered as validly filed.

II. The factual background to this decision involves two appeals: the appeal which is the subject of this decision and which is mentioned above, and a chronologically earlier appeal filed by the proprietor against the grant of its patent.

III. The decision to grant the European patent No: 1358272 was notified to the proprietor's representative on 16 February 2012. The EPO took this action because it had in error deducted the fees for grant and publication from the account of a firm of representatives that had ceased to represent the proprietor in 2005 [albeit the automatic debit order was revoked per 26.10.05 - the latter was however overlooked by the EPO]. This erroneous action of the EPO led to the mention of grant of the patent in suit appearing in the Patent Bulletin on 14 March 2012

IV. On 11 April 2012 the proprietor's representative filed a notice of appeal and a statement of grounds of appeal against the decision to grant the patent, "...prematurely and in error ...". The detriment that the proprietor claimed to had suffered was that he was no longer able to file a divisional application [and that the time limits for the costly step of validation were brought forward in time].

V. On 10 May 2012 the Appellant filed a notice of opposition against the patent whose mention of grant had appeared in the Patent Bulletin on 14 March 2012.

VI. On 15 May 2012, the Examining Division informed the proprietor's representative that it would rectify its decision to grant the patent and would refund the appeal fee [interlocutory revision inder Article 109 EPC].

VII. In a letter dated 24 May 2012, the Formalities Officer, on behalf of the Examining Division, informed the Appellant as follows:

"...

Following the appeal of 11.04.2012 the decision to grant dated 16.02.2012 was rectified with EPO Form 2710 of 15.05.2012 and sent to EPO postal services on 08.05.2012.
As the examination procedure is resumed, it is not possible to file an opposition during this part of the procedure.
Consequently your notice of opposition of 10.05.2012 cannot be considered as validly filed.

For the Examining Division"

VIII. On 24 July 2012 the Appellant filed an appeal against the purported decision of the Examining Division set out in the Formalities Officer's letter dated 24 May 2012 and paid the appeal fee. A statement of grounds of appeal was filed.

IX. The Appellant argued that it had fulfilled all the requirements for filing a valid opposition. The interlocutory revision of the decision to grant by the Examining Division took place subsequent to the filing of the opposition and did not affect the validity of the filing of the opposition. The Appellant referred to the principle of legal certainty in support of its position.

[...]

Reasons for the Decision

Admissibility of Appeal

1. The key issue to be decided is whether the Examining Division's letter of 24 May 2012 is a decision, or merely a communication. Whether a document is to be considered as a decision depends on the substance of its contents, not on its form - see J 8/81 OJ EPO 1982, 10, point I of Headnote and point 3 of the Reasons. The criterion of substance has to be assessed in its procedural context - see e.g. T 713/02 OJ EPO 2006, 267, points 2.12 and 2.14, second paragraph of the Reasons.

2. Procedural context of the Examining Division's letter of 24 May 2012

2.1 In the present case a valid appeal against the decision to grant had been filed by the Respondent-Proprietor after the publication of the mention of the grant.

2.2 Article 106(1) EPC provides that an appeal shall have suspensive effect. Thus, by filing a (valid) appeal against a decision to grant, an applicant/proprietor prevents the decision to grant from having any legal effect until the appeal is resolved. Otherwise an appeal would be nugatory (decision J 28/94, OJ EPO 1995, 742). If it is not possible to suspend or to defer the publication of the mention of grant until such an appeal is decided, the EPO should take all necessary steps to advise the public that the mention of grant was no longer valid (see also T 1/92, OJ EPO 1993, 685, point 3.1 of the Reasons). On the other hand, even after an appeal the decision as such remains and can only be set aside or confirmed by the Board of Appeal (see J 28/03, OJ EPO 2005, 597) or by way of interlocutory revision under Article 109(1) EPC. This means that the validity of an opposition filed against the patent concerned depends on the outcome of the appeal of the applicant/proprietor against grant.

2.3 Thus, by the time the Appellant filed its notice of opposition, the legal consequences of the decision to grant the patent had become subject to the suspensive effect of the Respondent-Proprietor's appeal against the decision to grant. As the Examining Division decided to rectify its decision to grant under Article 109 EPC, neither this decision, nor the publication of mention of grant had any legal consequences. Thus no granted patent is deemed to have existed against which an opposition might have been filed. It is thus immaterial whether or not the Appellant had fulfilled all the requirements for filing a valid opposition.

2.4 In the light of this procedural situation, namely that there were no proceedings in existence in which a decision could be made vis à vis the Appellant, and from the plain wording used, the letter of 24 May 2012 is to be seen as a mere communication of information, this information being that there is no granted patent which may be opposed. This letter clearly makes no decision on, nor reference to, the merits of the Appellant's opposition. That this communication is the last word of the EPO on this subject does not imply that it has decisional character; once the EPO has provided this information to the Appellant no useful purpose would have been served by repeating it. Indeed, the legal character of a document issued by the EPO (such as the letter of 24 May 2012) cannot be determined or altered by actions, or inaction, by the EPO after it has been issued. Thus the Appellant's argument that the letter of 24 May 2012 is to be considered as a decision because the EPO did not subsequently issue a further document in this matter is to be rejected. Moreover, under no circumstances is an Examining Division empowered to decide on the "validity", i.e. the admissibility of a (notice of) opposition. As the Appellant itself put it in its letter dated 25 October 2012: the Examining Division is clearly and simply the wrong instance for such a decision.

3. Article 107, first sentence, EPC provides that any party to proceedings adversely affected by a decision may appeal. This provision thus contains the requirement that there was a decision. As in the given circumstances the letter sent by the Formalities Officer on behalf of the Examining Division did not constitute a decision within the meaning of Article 106(1) EPC any appeal against that letter is inadmissible.

4. As set out in point 3 above, the Board has concluded that there was no decision. Thus the Appellant is not a person entitled to appeal under Article 107 EPC, and hence its appeal must be rejected as inadmissible in accordance with Rule 101 EPC.

[...]

Order

For these reasons it is decided that:

The appeal is rejected as inadmissible.

[...]

Epilogue
           
The applicant paid the fee for grant and publishing, together with the fee for further processing, on 20.07.2012, and filed a new divisional (the fifth out of this application) on the same date.
A new decision to grant was issued on 18.10.12, indicating that the mention of the grant would be published in the European Patent Bulletin of 14.11.12.
Two oppositions were filed on 13.08.13, one day before the end of the opposition period - one by the same opponent as the above Appellant, one by another opponent.
The dominos keep on falling...

This decision has European Case Law Identifier:  ECLI:EP:BA:2013:J002212.20131107. The whole decision can be found here. The file wrapper can be found here. Photo by Jacqui Brown
obtained via Flickr.

Note: we usually discuss decisions that were made available online on the EPO website in the last week or so before our blog, whereas the above decision was put online on 07.04.14, shortly before we started to blog at a regular pace. However, I consider the above decision a quite unusual one, and therefore decided to put it on the blog.

Thursday, June 12, 2014 T 2599/11 - Re-instating broader claims in opposition appeal

This is an appeal by the patent proprietor against a decision of the Opposition Division. An issue to be resolved was whether the proprietor was allowed at this stage to file a request with a broader claim than decided by the Opposition Division.

Reasons for the Decision

1. Admissibility of the appeal, Article 110 and Rule 101(1) EPC

1.1 With the statement setting out the grounds of appeal the appellant had filed a main request and first and second auxiliary requests, all broader in scope than the claims defended by the appellant before the opposition division.

The respondent has argued that these requests were inadmissible, since they were not subject of the decision under appeal, and that therefore the appeal was inadmissible.

However, whether the appeal is admissible or not, does not depend on the admissibility of these requests, but on the requirements Rule 101(1) EPC refers to.

1.2 Rule 101(1) EPC ("Rejection of the appeal as inadmissible") stipulates that if the appeal does not comply with Articles 106 to 108, Rule 97 or Rule 99, paragraph 1(b) or (c) or paragraph 2 EPC, the board of appeal shall reject it as inadmissible, unless any deficiency has been remedied before the relevant period under Article 108 EPC has expired.

[…]

It follows from the above that the appeal complies with the relevant legal provisions listed in Rule 101(1) EPC and is therefore admissible.

2. Admittance of the sole request of the appellant

2.1 The sole request was filed after the statement of grounds of appeal. Therefore it has to be decided whether this request can be admitted into the proceedings according to the Rules of Procedure of the Boards of Appeal (RPBA).

2.2 In principle the statement of grounds of appeal shall contain a party's complete case which has to be taken into consideration by the board pursuant to Article 12(2) RPBA, if it does not hold facts, evidence or requests inadmissible which could have been presented or were not admitted in the first instance proceedings (Article 12(4) RPBA). Nevertheless, this does not mean that amendments to a party's case are excluded from the appeal proceedings. Rather they are allowable under the requirements of Article 13(1) RPBA, namely under the discretion to be exercised by the board with respect to the complexity of new submissions, the current state of the proceedings and the need for procedural economy. Moreover Article 13(3) RPBA rules that amendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues which the board or the other parties cannot reasonably be expected to deal with without adjournment of the oral proceedings.

2.2.1 The appellant's case was set out in the statement of grounds of appeal dated 27 March 2012 in which the patent was defended inter alia with a first auxiliary request. After having been filed its case, the appellant amended its first auxiliary request insofar as in claim 1 the word "flow" was replaced by "floor", the expression "characterized in that" was moved and claims 21, 22 and 32 to 39 were deleted (cf claims 1 to 30 of auxiliary request Ib filed on 18 June 2013). With the amendments mentioned in point III above, this request finally became the sole request in the appeal proceedings.

2.2.2 Exercising its discretion in line with the limits set out above the board considers that these amendments are marginal as they can be understood effortless and legally assessed. Furthermore there is no risk of misunderstanding of the amendments by the respondent and the board as well and moreover the amendments do not affect the substance of the claimed matter. Therefore it can reasonably be expected that all participants of the procedure are in a position to deal with the amendments easily and without adjournment of the oral proceedings (Article 13(3) RPBA).

2.3 The admittance of the sole request into the appeal proceedings under Article 13(3) RPBA however, does not per se mean that there are no further hurdles to overcome with respect to its admissibility. Since pursuant to Article 12(4) RPBA it remains to decide whether this request has to be considered as inadmissible for the reason that it could have been presented or was not admitted in the first instance proceedings before the opposition division.

2.3.1 The board has no doubt that the sole request could have been filed already before the opposition division, because the arguments that were discussed in the appeal proceedings regarding inventive step were already raised with the respondent's notice of opposition. Apart from this the sole request's claims correspond in substance to claims 1 to 20, 23 to 31 and 39 of request A at stake in opposition proceedings, which was filed on 25 June 2010, but later withdrawn in the oral proceedings before the opposition division and subsequently substituted by requests B to E, on which the opposition division delivered at the end its decision. Nevertheless, the board exerted its discretion to admit the sole request of the appellant to the procedure for the following reasons:

2.3.2 The purpose of the opposition appeal proceedings is mainly to give the losing party the possibility of challenging the decision of the opposition division on its merits, cf decision G 9/91 (OJ EPO 1993, 408) and opinion G 10/91 (OJ EPO 1993, 420), point 18 of the reasons. This implies that appeal proceedings are not about bringing an entirely fresh case. Rather, the decision of the board of appeal will in principle be taken on the basis of the subject of the dispute in the first instance proceedings. The appeal proceedings are thus largely determined by the factual and legal scope of the preceding opposition proceedings which in principle confines the parties range to amend the subject of dispute in second instance proceedings (T 1705/07, point 8.4 of the reasons).

2.3.3 In this regard the respondent has submitted that the appellant was not allowed to file requests that were broader in scope than the request on which the decision was based, since the function of appeal proceedings is to give a judicial decision upon the correctness of the decision taken by the opposition division.

2.3.4 Contrary to the submissions of the respondent the present board is of the opinion that the purpose of the appeal proceedings as defined in G 9/91 and G 10/91 does not prevent the appellant from submissions and requests which after revocation of its patent by the opposition division revert to a more broadly worded version in appeal proceedings than the claims defended in opposition proceedings, if these broader claims do not amount to a completely fresh case.

2.4 Thus, with respect to Article 12(4) RPBA the board had to consider whether the non-filing of the sole request or the withdrawal of the similar request A in the opposition procedure prevented the opposition division from giving a reasoned decision on the critical issues, thereby compelling the board either to give a first ruling on these issues or to remit the case to the opposition division, cf Case Law of the Boards of Appeal of the EPO, 7th edition 2013, IV.E.4.3.2 c).

2.4.1 In this context the respondent referring to decision T 361/08 has argued that the first auxiliary request filed with the statement of grounds of appeal was to be rejected as inadmissible. In this decision (see point 13 of the reasons, last paragraph) the board stated that the fact alone that the main request in question was submitted and subsequently withdrawn in the first instance proceedings was a sufficient reason not to admit this request into appeal proceedings. The present board, however, does not subscribe to this general statement but it endorses the more restricted statement in the third paragraph of point 14, that it is not the patentee's right to revert to granted claims if these claims did not form a basis for the decision under appeal because the request comprising these claims was withdrawn in the first instance proceedings.

2.4.2 In the present case, claim 1 of the sole request did indeed form a basis for the opposition division's decision. As it is clear from the facts and submissions point IV, the opposition division decided on inventive step of auxiliary request E and revoked the patent after the broader requests A, filed on 25 June 2010, and B, C and D had successively been withdrawn in the course of the oral proceedings. Claim 1 of auxiliary request E is a combination of granted claims 1, 23 and 26, whereas claim 1 of the sole request in appeal proceedings is a combination of granted claims 1 and 23. Hence, it is broader than claim 1 on which the opposition division decided. However, this does not exclude the appellant from defending its patent on the basis of the sole request.

2.4.3 Since all features of claim 1 of the sole request are present in claim 1 of request E which formed the basis of the impugned decision and on which the opposition division came to a negative finding of its subject-matter regarding inventive step, the opposition division has also expressed itself - at least implicitly - on the subject-matter present in the sole request. Therefore the board is of the opinion that the present case is neither a fresh case in the sense of G 9/91 and G 10/91 nor a case which Article 12(4) RPBA intends to avoid by granting the board the discretionary power not to admit requests which could have been presented in the first instance proceedings. Finally it should be noted that the critical issues in the opposition and the appeal proceedings were identical in so far as the question had to be answered whether the claimed subject-matter involves an inventive step in view of documents D8 and D3 or not.

2.4.4 In conclusion it is summarized that the sole request of the appellant does not bring an entirely fresh case and the decision of the board can be taken on the basis of the subject of dispute in the first instance proceedings. For these reasons the sole request was admitted into the proceedings.

This decision has European Case Law Identifier: ECLI:EP:BA:2013:T259911.20131126. The whole decision can be found here. The file wrapper can be found here.