31 May 2018

T 0355/15 - Implicit Main Request

Key points

  • The OD had decided to revoke the patent for insufficient disclosure.
  • The Main Request filed with the Statement of grounds is: " It is requested to set aside the decision of the opposition division to revoke the patent and to remit the case back to the opposition division for further examination."
  • According to the Board, the appeal is admissible despite this Main Request.
  • " the Board concludes that the Appellant [proprietor] implicitly requested, both in its notice of appeal and in its statement of grounds, that the revocation decision be set aside and the proceedings be continued on the basis of the highest-ranking request that had ultimately been pending before the Opposition Division" .



III. In the decision under appeal, the Opposition Division came inter alia to the following conclusions:
- The modified version of the patent in suit according to the Main Request filed with letter dated 7 November 2014 was not objectionable on formal grounds.- However, the patent in suit did not sufficiently disclose how the "reducing" step g) of Claim 1 was to be carried out in order to achieve the "claimed improvement".Thus, the person skilled in the art seeking to carry out the claimed reduction step "would indeed need to embark on a research program, in particular in as far as reductant, further components and operating conditions are concerned".
IV. With its statement setting out the grounds of appeal the Appellant (Patent Proprietor) submitted four sets of amended claims as Auxiliary Requests 1 to 4. It rebutted the reasoning given by the Opposition Division as regards the finding of insufficiency of the disclosure, referring also to newly filed documents supposed to illustrate common general knowledge regarding the FT process.

Reasons for the Decision
1. Admissibility of the appeal
1.1 In the decision under appeal, the Opposition Division concluded that the patent had to be revoked since it was objectionable under Article 100(b)/83 EPC, both in the amended version according to the then pending Main Request, and in the amended version according to the then pending Auxiliary Request 1.
1.2 In its notice of appeal dated 13 February 2015, the Appellant requested "that the decision of the Opposition Division be withdrawn and the subject European patent be maintained".
For the Board, this is an at least implicit request to set aside the decision under appeal, which "defin[es] the subject of the appeal" pursuant to Article 108, Rule 99(1)(c) EPC.
1.3 As pointed out by the Respondent, neither of notice of appeal and statement of grounds of appeal contains an express request for the maintenance of the patent in a particular version (claims, description pages and figures).
1.3.1 In the present case this does not, for the Board, mean that the requirement stipulated in Rule 99(2) EPC is not met, according to which "the extent to which [the decision] is to be amended" must be indicated in the statement setting out the grounds of appeal.
1.3.2 In particular, the Appellant's statement setting out the grounds of appeal (point 2.1) contains inter alia the following requests:
"Main request
It is requested to set aside the decision of the opposition division to revoke the patent and to remit the case back to the opposition division for further examination."
Should the appeal board not allow our main request already based on our written submission, oral proceedings (Art.116 EPC) are requested".
1.4 Considering also
- that no new set of claims labeled Main Request was filed together with the statement of grounds,
- that the claims of the patent as granted are not mentioned, let alone considered further in the statement,
- that the statement contains no further indications as regards the version (claims, description pages, figures) of the patent to be considered in the first place,
the Board concludes that the Appellant implicitly requested, both in its notice of appeal and in its statement of grounds, that the revocation decision be set aside and the proceedings be continued on the basis of the highest-ranking request that had ultimately been pending before the Opposition Division, i.e. on the basis of the amended version according to the then pending Main Request (comprising Claim 1 as granted and amended dependent claims 2 to 11).
1.5 In the board's judgement, the appeal is, therefore, admissible (Article 108, Rules 99(1)c) and 99(2) EPC)

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