Tuesday, October 15, 2019 T 657/17 - Always ask your money back!

G 3/03 clarified that, in the event of interlocutory revision under Article 109(1) EPC, the department of the first instance whose decision has been appealed is not competent to refuse a request of the appellant for reimbursement of the appeal fee. The current decision relates to the competence of the Board to decide on  reimbursement of the appeal fee in the event of interlocutory revision where the appellant did not explicitly request for reimbursement of the appeal fee. The current decision followers earlier case law, and concludes that, n the absence of a request for reimbursement of the appeal fee, the issue of reimbursement of the appeal fee should not have been referred to the Board for decision, and the Board is also not empowered to decide on this issue as an ancillary matter.

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the contested decision and the minutes of the oral proceedings before the Opposition Division that the Proprietor had withdrawn the main request and first auxiliary request, maintaining the second auxiliary request as the sole request.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.

Wednesday, May 18, 2016 T 1785/15 - Appeal against a grant, following advice from the Office

The proprietor filed an appeal against the decision to grant, after the patent was granted with errors -introduced by amendments by the Examining Division, but implicitly approved by the applicant with his R.71(3) response- and after being pointed out to the option of filing an appeal by the formalities officer of the EPO. But his appeal was not succesfull: in light of the decision G 1/10, the appeal was inadmissible. The Board however ordered a reimbursement of the appeal fee for reasons of equity, as the proprieter filed the appeal based on incorrect advice from the office.

Friday, October 02, 2015 T 595/11: underpayment of appeal fee and still admissable?

A 20% reduced appeal fee was paid by the Appellant (patent owner) who filed a notice of appeal in Dutch, while the patent owner is a legal person in Switzerland. The EPO communicated the file number to the Appellant and the Respondent (opponent) and indicated that the case was referred to a specific Board without any further comments. Later, when the respondent informed the Board that the Appellant was not entitled to the fee reduction, the Appellant paid the remaining portion of the fee and requested that the EPO to accept the late payment of the full appeal fee through the application of the principle of good faith (according to G2/97: the principle of the protection of legitimate expectations). In this case the Board discusses whether the Appellant could have expected that the EPO checked the entitlement to the fee reduction early enough such that the Appellant could have remedied the Appeal, for example, by paying the full fee on time or by filing a request for re-establishment of rights. In response to arguments of the Respondent, the Board had also to consider whether the consequence of its decision would adversely affect one or more parties to the Appeal if the principle of the protection of legitimate expectations applies to this case.

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

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

Summary of Facts and Submissions

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

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

(...)

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

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

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

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

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.