T 0219/15 - Transfer opposition refused

Key points

• In this case, a request for transfer of the opposition was filed, but the Board refuses this because of lack of evidence that the relevant business assets were transferred. The original opponent remained opponent and is also appellant. His submissions remain valid in the appeal.
• " The representative of the opponent submitted information after commencement of the appeal proceedings to show the alleged transfer of the business relating to the opposed patent and had been at the same time authorised representative of the alleged new opponent. In agreement with T 423/11 [4], the board concludes that even if the situation were unclear this had no impact on the overall procedure, i.e. the appeal proceedings." 
• There is also an issue about inventive step, boiling down to "the unusual position of the opponent during oral proceedings before the opposition division in not commenting on inventive step". The Board sees no procedural violation in how the OD dealt with this. 

EPO T 0219/15 -  link

Reasons for the Decision

1. Party status and admissibility of the appeal of appellant I

The appeal was filed by the opponent Clariant Produkte (Deutschland) GmbH of Lenbachplatz 6 in Munich. A request for transfer of the opposition to Johnson Matthey PLC was filed by letter of 30 March 2015. The evidence provided does not conclusively establish that the entire rights and obligations relating to the appeal were transferred to Johnson Matthey PLC.

An opposition pending before the EPO may "be transferred or assigned to a third party as part of the opponent's business assets together with the assets in the interests of which the opposition was filed" (G 4/88 [order], G 2/04 [2.2.2]).

In the present case, it cannot be concluded from the readable parts of the "Share and Asset Purchase Agreement" submitted on 30 March 2015 that the business assets, i.e. the opposition proceedings relating to the patent in suit, were sold by Clariant Produkte (Deutschland) GmbH to Johnson Matthey PLC. In fact the seller mentioned in the agreement is Clariant AG Rothausstrasse 61 in Muttenz, Switzerland and it is not clear what is meant by "the sale of the Company's global Clariant Energy Storage business" (page 23 of the annex to the letter of 30 March 2015). However, from point 3.7 (c) (page 16 of the annex) it is evident that Clariant can remain party to opposition proceedings for the benefit of the purchaser (i.e. Johnson Matthey PLC). This is also in line with the fact that the statement setting out the grounds of appeal was submitted by the representative who filed the appeal for Clariant Produkte (Deutschland) GmbH.

This position of the board was already indicated to the parties in its communication pursuant to Article 15(1) RPBA of 27 February 2017 and not further commented on by the opponent. Instead, in its further submissions dated 30 June 2017, "Clariant Produkte (Deutschland) GmbH/Johnson Matthey PLC" were designated as the opponent.

Therefore, the request for transfer of the status of opponent is to be refused.

The opponent "Clariant Produkte (Deutschland) GmbH" is therefore appellant I and remains party to the proceedings, holding all procedural rights and obligations (see also T 1032/10 [1.2.5], T 184/11 [2.1], T 1563/13 [2.4 and 2.5]).

The statement setting out the grounds of appeal was submitted by the professional representative of "Clariant Produkte (Deutschland) GmbH" and fulfils the requirements of Rule 99(2) EPC, so the appeal of appellant I is admissible.

According to G 2/04 [1.3], there should be no doubt as to who may validly exercise procedural rights and to whom official actions by the EPO are to be addressed at any given time throughout the proceedings. It is established jurisprudence that until evidence of the transfer has been provided, the original party to the proceedings continues to have the relevant rights and obligations (T 960/08 [2.2 and decisions cited therein]). In the present case, the board considered the evidence presented to be insufficient (see reasons supra), thus Clariant Produkte (Deutschland) GmbH (opponent) remained appellant I.

Appellant II argued that during the proceedings there had been doubt about the identity of appellant I (see supra).

The board cannot see that a request for the transfer of opposition had any negative consequences on the proceedings as a whole nor that it had adversely affected appellant II in any way. The representative of the opponent submitted information after commencement of the appeal proceedings to show the alleged transfer of the business relating to the opposed patent and had been at the same time authorised representative of the alleged new opponent. In agreement with T 423/11 [4], the board concludes that even if the situation were unclear this had no impact on the overall procedure, i.e. the appeal proceedings.

2. Sufficiency of disclosure

The opposition division ruled in the decision under appeal that the invention was sufficiently disclosed. Neither appellant I nor appellant II contested this finding. The board sees no reason to take a different stance.

3. Novelty of the patent as granted

3.1 The main point of debate was the novelty of the subject-matter of claim 9. Prior to addressing the different prior-art documents, the scope of claim 9 needs to be established.

Claim 9 relates to a carbon-coated LiFePO4 (LFP) powder that is characterised by a reversible electrode capacity relative to the theoretical capacity dependent on the total carbon content. 

[...]

3.2.6 Since the subject-matter of claim 9 is novel, the same applies to claims 1 to 8, 10 and 11, that directly or indirectly depend on claim 9.

4. Inventive step

4.1 During oral proceedings before the opposition division, appellant I stated that it would not discuss inventive step of auxiliary request 3 in opposition proceedings, but in appeal (see minutes of the oral proceedings before the opposition division, point 5.1). This is also confirmed in the decision under appeal (point 3).

During the written proceedings before the opposition division, the appellant only raised an inventive-step objection against dependent claim 8 as granted in view of the combination of E1 and E2 (notice of opposition, page 6, first paragraph), against claim 1 as granted in view of E5 (letter of 9 January 2014, page 16, first full paragraph), against claim 9 as granted in view of E11 in combination with E6 (letter of 9 January 2014, point 6.1) and against claim 9 in view of E12 (letter of 9 January 2014, point 6.2).

4.2 Therefore, the ground of opposition based on Article 100(a) in combination with Article 56 EPC was as such part of the opposition proceedings (see also point 3 of the reasons of the decision under appeal).

[...]

4.4.7 Therefore, the subject-matter of claim 9 is not derivable from the cited prior art.

4.5 Since the subject-matter of claim 9 involves an inventive step, the same applies to the process for the preparation of the powder according to claim 9, i.e. claim 1, and to claims 2 to 8 and 10 to 11, that directly or indirectly depend on said claims.

5. Remittal

According to appellant I the opposition division committed a procedural violation, since it did not comment in the impugned decision on inventive step, especially of claim 1 (see letter of 30 June 2017, items 3.9 and 3.11), that was unchanged as compared to the patent as granted. Therefore, the case should be remitted to the opposition division to discuss inventive step.

The only inventive-step objection that was raised during opposition proceedings against claim 1 of the patent as granted, which was the only unchanged independent claim still present in the then third auxiliary request, was an objection based on E5 (letter of 9 January 2014, page 16, first full paragraph; see also item 4.1 supra). This objection is identical to the objection raised in appeal proceedings.

The opposition division interpreted the silence of opponent I on inventive step during the oral proceedings as meaning that the opponent had no comments on inventive step of auxiliary request 3 (point 3 of the impugned decision). Although the opposition division did not extensively comment on said minimally substantiated objection in the decision, it nonetheless indicated that it saw no reason why this objection could call inventive step into question (see reasons 3, second paragraph, last sentence of the impugned decision), which shows that it took the objection into consideration. In view of the particular situation - the lack of fully substantiated reasoning on inventive step and the unusual position of the opponent during oral proceedings before the opposition division in not commenting on inventive step - the board considers that the opposition did not commit a procedural violation, but rather erred in its judgement.

The board sees no reason to remit the case, for the following reasons:

Firstly, the EPC does not guarantee the parties an absolute right to two instances in the sense that parties are entitled to have every aspect of fact or law on which a board of appeal bases its decision examined previously by the first instance (see J 6/98, [4]; T 105/09, [2.6]; T 214/04, [3]). Secondly, appellant I declined to discuss inventive step before the opposition division, so there is no reason to provide him with another chance to do so. Further, the substantiation of the inventive-step objection was not extensive during the written appeal proceedings, so that the board saw no reason not to deal with it during oral proceedings. Furthermore, said request was only made late in the proceedings, i.e. after the communication under Rule 15(1) RPBA. A remittal would unnecessarily lengthen the overall proceedings, which would not be in line with procedural economy.

6. Reimbursement of the appeal fee

6.1 Appellant II alleges that the opposition committed several procedural violations and that therefore the reimbursement of the appeal fee is justified in accordance with Rule 103 (1)(a) EPC. The board does not agree for the following reasons:

The opposition division provided reasons in points 2.2.3 to 2.2.6 of the impugned decision as to why it considered that the subject-matter of claim 9 lacked novelty with respect to E1. It stated that it considered E7 highly relevant and judged that the burden of proof for showing the contrary rested with the patent proprietor. The reasoning is presented in a comprehensible manner, but does not include any reference to the decisions cited in the submissions of the parties, which is understood as meaning that the opposition division judged these decisions not relevant to the present case.

The fact that the opposition division's conclusion is not upheld by the board is not linked to a procedural violation by the opposition division. It is rather based on a wrong evaluation of the evidence, facts and arguments by the opposition division. It is established case law that a wrong assessment may be regarded as a substantive error, but is not a procedural violation (Case Law of the Boards of Appeal of the EPO, 8th edition 2016, chapter IV.E.8.4.5).

6.2 According to the minutes of the oral proceedings (point 1.5.1), the chairman announced that, at the discretion of the opposition division, both experts were allowed to talk under the responsibility of the attorney. As appellant II did not ask for correction of the minutes, its allegation that its technical expert was not given the opportunity to comment on the addition of carbon to LFP is therefore unfounded.

6.3 It is also stated in said minutes that the chairman indicated that auxiliary request 1 was not admitted into in the proceedings (point 4.1). The wording "indicated" does not permit the conclusion that this was the final position of the opposition division and that the parties did not have the possibility to comment on it. There is no indication in the minutes that the proprietor asked to be able to present its position in this respect and that the opposition division refused to hear appellant II on the admissibility of auxiliary request 1. Again, no request for correction of the minutes was made. Any party is expected actively to participate in the oral proceedings and safeguard its interests (R 09/11, reasons 3.1.7). No violation of appellant II's right to be heard is therefore apparent.

7. Apportionment of costs

The board understands that the request for a different apportionment of costs in accordance with Article 104(1) EPC relates to the additional costs incurred by appellant I because of the filing of documents E17 and E18 in the course of the appeal proceedings (point V of letter of 24 February 2016). This request is refused, for the following reasons:

According to Article 114(2) EPC, Article 12(2) RPBA and Article 13(1) RPBA, it is evident that a party is allowed to submit new documents and evidence during appeal proceedings, but their admission is at the discretion of the board. In the present case, the board considers that E17 and E18 were a reaction of appellant II challenging the results of E7. Their submission cannot be considered an abuse of procedure causing an unreasonable amount of extra work for appellant II. Therefore, there are no reasons to apportion costs.

Furthermore, the arguments relating to "salami tactics" and to co-operation with respect to details on E7 relate at least partly to the overall procedure including the opposition proceedings. However, appellant II did not ask for an apportionment of costs before the opposition division. It is not apparent, and nor has it been substantiated, how any unjustified extra work allegedly caused by appellant I during opposition proceedings had an impact on appeal proceedings.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is maintained as granted.

3. The request for reimbursement of the appeal fee is rejected.

4. The request for apportionment of costs is rejected.