T 0840/11 - Repairing in opposition appeal

Key point

• The patent was revoked for essentially correct reasons. Board 3.3.05 admitted an appeal based on a new claim request overcoming the reasons by amendment. The Board distinguishes from T2532/11 by noting that "the statement of grounds of appeal contains a detailed discussion [...] of why the independent claims of the amended requests in the appellant's opinion overcome the objection of added subject-matter."

T 0840/11

Online 28.04.2015 - dated 21.01.2015 - Board 3.5.03 (Van der Voort, Madenach, Cramer) 

Reasons for the Decision

1. Admissibility of the appeal (Article 108, Rules 99(2) and 101(1) EPC)

1.1 The respondent requested that the appeal be rejected as inadmissible, since the appellant's statement of grounds of appeal failed to meet the requirements set out in Rule 99(2) EPC. It indicated neither any reason for setting aside the opposition division's decision nor the extent to which it was to be amended. Instead, [according to the opponent] the appellant [patent proprietor] seemed to wholly accept the opposition division's decision and filed amended requests in response to it. The appellant had thus, according to the respondent, considered the opposition division's decision as an examination report which the appellant had accepted in its entirety and to which it had reacted by filing new requests. Hence, the appellant was attempting to use the appeal procedure as a continuation of the proceedings. Reference was made to T 2532/11 (reasons 2.2.2, 2.2.5 and 2.6.2).

1.2 The board notes that the patent was opposed inter alia on the ground of Article 100(c) EPC, i.e. that the subject-matter of claim 1 extended beyond the original disclosure (Article 123(2) EPC), with the argument that claim 1 as granted did not include a handheld secure token. With its communication annexed to the summons to oral proceedings, the opposition division expressed its doubts as to whether the challenge-response approach in the general way it was claimed was originally disclosed. In its response, the patent proprietor provided arguments and submitted an auxiliary request in an attempt to remove the doubts expressed by the opposition division. The filing of a second auxiliary request during the oral proceedings was not allowed by the opposition division (see point II above). With the statement of grounds of appeal, the appellant filed claims of a main request in which claim 1 specified a handheld secure token, and submitted extensive argumentation (over 5 pages) why some other features which the opposition division in its written decision considered as a necessary part of the challenge-response approach as originally disclosed did not need to be included in claim 1.

1.3 In the board's view, with the filing of the auxiliary request and the arguments in preparation for the oral proceedings before the opposition division in response to the communication annexed to the summons, the appellant made a bona fide effort to remove the opposition division's doubts. The subsequent filing of an appeal with new requests is understood as a response to the detailed reasons given in the opposition division's written decision. In the board's view, these requests and the arguments in their support could not be expected to have been filed in response to the rather unspecific statement of the opposition division in the communication annexed to the summons.

With respect to decision T 2532/11 cited by the respondent, the board notes that at point 2.3.3 of that decision it is held that "none of the main grounds for revocation of the patent presented in the impugned decision was addressed in the statement of grounds of appeal". This does not apply to the present case, since the statement of grounds of appeal contains a detailed discussion (cf. the section "Article 123(2) EPC - Added subject matter") of why the independent claims of the amended requests in the appellant's opinion overcome the objection of added subject-matter. Further, in T 2532/11 at point 2.4.2, it is stated that with respect to the question of whether or not newly filed requests can be seen as implicit grounds of appeal, the issue is "whether the grounds are understandable and sufficiently linked to the contested decision in order to form an admissible appeal" (original underlining). In the board's view, this requirement is met in the present case, considering the appellant's detailed analysis of the reasons given in the decision.

1.4 The board concludes that, since the appeal complies with Rule 99(2) EPC as well as the other requirements for an admissible appeal (which was not contested), the appeal is admissible.