Tuesday, January 22, 2019 T 623/18 - On the quality of the arguments in the statement

Sufficiently substantiated?

In the present case, the notice of opposition was based on the grounds of opposition under Article 100(a) EPC, in combination with Articles 54 and 56 EPC, and Article 100(b) EPC. Several documents were mentioned, some of which were con­si­dered in more detail in the reasons relating to the ground for opposition under Article 100(a) EPC.

However, the opposition division followed the proprietor in finding that none of the grounds for opposition was sufficiently substantiated within the meaning of Rule 76(2)(c) EPC, and thus held the opposition inadmissible.

With respect to Art. 100(a) EPC, one of the reasons was that the opponent's arguments failed to refer to the individual features of claim 1 and so did not enable the patent proprietor or the opposition division to reconstruct the novelty objection without making their own investigations.

The board disagrees with this conclusion. As summarized in reason 8, the board considers that Rule 76(2)(c) EPC does not require as much from the notice of opposition; in particular, whether the "written reasoned statement" enables the "patent proprietor and the opposition division to clearly understand the nature of the objection raised and the evidence and arguments adducted in its support" and whether "further investigations" are necessary for the patentee or the opposition division "to be able to form a definitive opinion on the grounds for opposition" (emphasis by the board) is, in the board's judgment, a matter for the allowability rather than the admissibility of the opposition.

Wednesday, January 09, 2019 T 384/15 - Intervention another company from the same group as the opponent: admissible?

Opposition appeal proceedings were pending with a single opponent, Santarelli SA. Early during the appeal proceedings, a first intervention was filed by a first assumed infringer, Bose Gmbh. At a later moment during ther appeal proceedings, a second intervention was filed by a second assumed infringer, Bose Limited. The proprietor objected to the interventions by Bose Gmbh and Bose Limited as both belong to the same group as Santarelli SA, and submitted that these two intervenors were not third parties and that the filed interventions were abuse of law, as a consequence of which the interventions (as well as the opposition) should be considered inadmissible. The Board did not agree. The Board and that the interveners are "third parties", and also that the invoking Article 105 EPC had not been an attempt by the opponent and/or interveners to circumvent the law by abuse of process. The Board held the opposition and both interventions admissible.

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, July 01, 2016 T 2365/11: arguments to save your patent that fail without proof

In this opposition appeal the patent proprietor tried some interesting procedure related arguments to save his patent. 
A first line of arguments was based on the fact that in a specific letter another opponent was mentioned than the person who filed the opposition. According to the proprietor: "Since the 'true' opponent was therefore not known, and in any case the original opponent had no legal capacity, this constituted a circumvention of law by abuse of due process according to G3/97, rendering the opposition inadmissible." A second line of arguments was that replacing the chairman of the Opposition Division one day before the oral proceedings resulted in a procedural violation. 
The proprietor was not very successful with these arguments. It seems that the problem was that the proprietor could not prove what he argued - at least he did not provide enough evidence and arguments to show that there was a real circumvention of law and that the new chairman was not well-prepared for the oral proceedings.

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.

Tuesday, June 17, 2014 T 1486/10 - No room for asking "who is who"

This is an appeal wherein the patent proprietor  argued that the opposition was not admissible because the opponent could not be clearly and unmistakably identified before expiry of the time limit for opposition. The board considered that the indication of the opponent as given in the notice of opposition does not fairly allow room for speculation as to the identity of the opponent.

This appeal was lodged by the proprietor against the decision of the opposition division revoking European patent No. EP 1319299 on the grounds that the opposition was admissible and that the subject-matter of claim 1 of the granted patent lacked an inventive step (Article 100(a) EPC in combination with Articles 52(1) and 56 EPC) having regard to the disclosures of the two prior art  documents considered in combination.

The patent proprietor had argued that the opposition was not admissible because the opponent could not be clearly and unmistakably identified before expiry of the time limit for opposition.

Reasons for the Decision
1. Admissibility of the opposition

1.1 The appellant contends that the opposition should be rejected as inadmissible pursuant to Article 99(1) and Rules 55 and 56(1) EPC 1973 [editor's note: corresponds to R. 76 and R.77(1) EPC], because the erroneous designation of the opponent meant that the opponent could not be correctly identified.

1.2 The appellant's arguments can be summarised as follows:
The opposition was filed with the following wording: "Hiermit wird namens und im Auftrag der Harry Graf Software GmbH, Mainzer Strasse 36, 55411 Bingen am Rhein, Einspruch gegen ... eingelegt.". The designation of the opponent thus corresponds neither to the natural person Harry Graf nor to the legal person Graf Software GmbH, both mentioned in the telephone directory at the address indicated in the notice of opposition (cf. documents A1 and A4 cited during the opposition procedure). As a result, the opponent cannot be clearly and unmistakably identified, since the opponent could be the natural person "Harry Graf", the legal person "Graf Software GmbH", or the natural and legal persons jointly ("Harry Graf und Graf Software GmbH").
The appellant referred in particular to G 3/99, which states that the opponent has to be determined before expiry of the time limit for opposition (cf. G 3/99, point 12 of the reasons and T 25/85, point 6 of the reasons). The appellant argued that a notice of opposition must be objectively clear, ie it must not require speculation to establish which part of the notice was wrong and what the true intention [of the opponent] was. In the appellant's view, the reasons given in the impugned decision were based purely on speculation. In particular, the decision was partly based on the ground that it was a well-known practice in Germany to include the name of an associate in the company name. However, it could not be assumed that this would be known to persons resident outside Germany such as the present appellant. The appellant submitted also that the board in its preliminary opinion concerning admissibility (cf. point 1 of the communication accompanying the summons) had not correctly applied the test that the opponent must be clearly and unmistakably identifiable.
Accordingly, the decision of the opposition division should be set aside and the opposition be found inadmissible.

1.3 The board notes that it is not in dispute that the designation "Harry Graf Software GmbH" is erroneous, because no company of that name existed at the address provided in the notice of opposition.

1.4 Further, the board agrees with the appellant that the identity of the opponent must be clear from the notice of opposition without having to speculate as to the true identity of the opponent.

1.5 However, in the present case, the board considers that the indication of the opponent as given in the notice of opposition does not fairly allow room for speculation as to the identity of the opponent. In particular, the board considers that the erroneous name "Harry Graf Software GmbH" would not plausibly lead to the opponent's designation being construed as either the natural person "Harry Graf" or as joint opponents "Harry Graf und der Graf Software GmbH" instead of the corrected version "Graf Software GmbH".

1.6 In this respect, the wording used in the notice of opposition "Hiermit wird namens und im Auftrag der Harry Graf Software GmbH, Mainzer Strasse 36, 55411 Bingen am Rhein, Einspruch gegen ... eingelegt" (board's underlining) would in the board's view lead the reader to immediately conclude that the opponent is a company (GmbH). This is corroborated by the presence of the word "der" (= the) which is grammatically associated with the feminine noun "GmbH" as the genitive case of the definite article. In the board's view, it is implausible that the opponent is not a company, since then both the beginning and the end of the opponent's designation would have been erroneous. In this respect, filing an opposition in the name of a natural person according to the rules of the German grammar would have resulted in wording which would not include the word "der": "im Auftrag von Harry Graf", or less likely "des Harry Graf".

1.7 It is true that when looking up in the official documents ("Gemeinsames Registerportal der Länder"; cf. document A1 cited in the opposition procedure) in order to check the identity of the opponent one would notice a discrepancy. But irrespective of German naming practices and assuming for the reasons given above that the opponent is a company (GmbH), it would be immediately noticed that a GmbH existed at the given address with almost the same name, ie "Graf Software GmbH". Hence, it would be concluded, without any need to speculate, that the opponent was actually "Graf Software GmbH" (which in the above-cited German sentence would read "... der Graf Software GmbH" following the clause "im Auftrag" (i.e. in the name of) and that the discrepancy (ie the presence of the additional word "Harry") was the result of an error, which is all the more plausible considering that document A2 cited in the opposition procedure indicates Harry Graf as being the founder of the Graf Software GmbH.

1.8 The other possible identity of the opponent proposed by the appellant, ie jointly "Harry Graf und der Graf Software GmbH", in the board's view is simply too far-fetched to be seriously contemplated by the reader.

1.9 The board notes in passing that the European Patent Register gives the opponent's correct designation whereas in the file there is no mention of an amended entry in this respect. Thus the board cannot exclude that the opponent's correct name, ie without "Harry", had been entered into the register by the EPO when the opposition was filed, which underscores the obviousness of the correction. In its decision, the Opposition
Division noted that "Errors in a designation can be corrected pursuant to Rule 88 EPC 1973 [editor's note: R. 139 EPC], first sentence, at any time (T 828/98)" and held that the correct name of the opponent was "Graf Software GmbH" (cf points 2.4 and 2.10). The board additionally notes that the error in question is of the kind which could also have been dealt with under Rule 56(2) EPC 1973 (Rule 77(2) EPC), if the Opposition Division had noted the deficiency and had issued an invitation to remedy it (cf T 219/86, point 8 of the reasons).

1.10 The board concludes that there is no reason to set aside the opposition's division on the basis of this matter. The opposition is therefore admissible, since the other requirements concerning admissibility are met, which is in any case not in dispute.


2. Main request - claim 1 - novelty and inventive step
[...]

3. Remittal
3.1 The primary purpose of these appeal proceedings, as pointed out in board's communication accompanying the summons, is to examine the correctness of the opposition division's decision. In particular, this concerns the questions of admissibility of the opposition, novelty with respect to the disclosure of E6, and inventive step with respect to the disclosures of E6 and E44.

3.2 In view of the board's finding that these matters do not prejudice the maintenance of the patent, the decision under appeal has to be set aside. However, the board notes that the notice of opposition mentions a large number of other documents not considered in the decision of the opposition division in respect of the ground of opposition under Article 100(a) EPC. The ground of opposition based on Article 100(b) EPC also has not been considered by the opposition division.
In order that these matters, insofar as deemed necessary, can be considered by the opposition division, the board decides to remit the case for further prosecution (Article 111(1) EPC).

4. Auxiliary request
[...]


5. Costs
[...]

6. Admissibility of E50 and E51
[...]

7. Conclusion
The opposition is admissible. However, the ground of opposition under Article 100(a) EPC, insofar as based on lack of novelty with respect to E6 or lack of inventive step with respect to E6 combined with E44, does not prejudice the maintenance of the patent. The decision under appeal is therefore to be set aside and the case to be remitted for further prosecution.

Order
For these reasons it is decided that:
- The decision under appeal is set aside.
- The case is remitted to the opposition division for further prosecution.

- The requests for a different apportionment of costs are rejected.

This decision has European Case Law Identifier:  ECLI:EP:BA:2014:T148610.20140320. The whole decision can be found here. The file wrapper can be found here. Photo by Ernesto obtained via Flickr.