T 1854/16 - Applying Rule 99(2) EPC to individual grounds

Key points

•  Both the patentee and opponent appeal in this opposition appeal.
• "In the disputed decision, the Opposition Division concluded that the opposition grounds under Article 100(a) EPC in combination with Articles 52(2)(c) and 53(c) EPC against the patent as granted were unfounded"
• "The opponent did not contest this part of the decision during appeal proceedings."
• "Hence, the Board has no power to consider this part of the decision under appeal."
• As a comment, the  Board does not indicate the legal basis. It does mention Rule 99(2) in a further paragraph of the decision; see below.
• 
  
• "In the disputed decision, the Opposition Division concluded that the opposition grounds under Articles 100(c) EPC, 100(b) EPC, and 100(a) in combination with Articles 52(1) and 54 EPC (lack of novelty) against the patent as granted were unfounded In the disputed decision, the Opposition Division concluded that the opposition grounds under Articles 100(c) EPC, 100(b) EPC, and 100(a) in combination with Articles 52(1) and 54 EPC (lack of novelty) against the patent as granted were unfounded "
• "With the statement of grounds, the opponent explicitly maintained the corresponding objections, but only provided a copy of its arguments in its notice of opposition []. No explanation was given as to why the decision of the Opposition Division in this regards was wrong."
• " Since - contrary to Rule 99(2) EPC - no reasons are provided for setting aside the findings of the Opposition Division with regard to these aspects, these opposition grounds are not admissibly raised in the appeal. The Board has no power to review the Opposition Division's findings on these points."
• The Board considers the opponent's submission regarding inventive step, i.e. the opponent's appeal is not inadmissible. 
• As a comment, Rule 99(2) EPC is about the admissibility of the appeal. The Board applies this rule so as to provide for the partial (in)admissibility of the appeal* without a discretion to hear later submissions on the matter as envisaged by Art. 13 RPBA. Established case law, however, is that there is no concept of partial admissibility of an appeal. See e.g. T 1320/19 or T1679/21: “Zum einen kennt das EPÜ und die dazu ergangene Rechtsprechung das Konzept einer teilweisen Unzulässigkeit nicht. Sofern ein Einwand gegen die angefochtene Entscheidung in einer der Regel 99(2) EPÜ entsprechenden Weise vorgetragen wurde, ist die gesamte Beschwerde zulässig."
• As a comment, and in connection with the * above, Rule 99 is cited by the Board in connection with the patentee's main request, but the opponent's appeal concerns only Auxiliary Request 1'' (the set of claims held allowable by the OD). So the provision seems to be cited against the opponent as the respondent, if I understand the case correctly. 
• The fact that the opponent also files an appeal does not make that it must address claim requests held unallowable by the OD already in its statement of ground, it seems to me.
• As a comment, this decision is remarkable in firstly in citing Rule 99(2) for individual grounds of opposition, and secondly for possibly applying it against the opponent in its capacity as respondent. 

EPO T 1854/16 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t161854eu1.html

Main request (patent as granted)

Opposition grounds under Article 100(a) EPC in combination with Article 52(2)(c) EPC (mental acts as non-inventions) and with Article 53(c) EPC (exceptions of patentability for medical methods)

1. In the disputed decision, the Opposition Division concluded that the opposition grounds under Article 100(a) EPC in combination with Articles 52(2)(c) and 53(c) EPC against the patent as granted were unfounded (decision, reasons, sections 15 and 16).

2. The opponent did not contest this part of the decision during appeal proceedings.

3. Hence, the Board has no power to consider this part of the decision under appeal.

Opposition grounds under Article 100(c) EPC (unallowable amendment), Article 100(b) EPC (insufficient disclosures), Article 100(a) EPC in combination with Articles 52(1) and 54 EPC (lack of novelty)

4. In the disputed decision, the Opposition Division concluded that the opposition grounds under Articles 100(c) EPC, 100(b) EPC, and 100(a) in combination with Articles 52(1) and 54 EPC (lack of novelty) against the patent as granted were unfounded (decision, reasons, sections 13, 14, 20 to 23).

5. With the statement of grounds, the opponent explicitly maintained the corresponding objections, but only provided a copy of its arguments in its notice of opposition or (with regard to late-filed document O12) in a submission of 4 February 2015 to the Opposition Division (Statement of grounds, Annex). No explanation was given as to why the decision of the Opposition Division in this regards was wrong.

6. Since - contrary to Rule 99(2) EPC - no reasons are provided for setting aside the findings of the Opposition Division with regard to these aspects, these opposition grounds are not admissibly raised in the appeal. The Board has no power to review the Opposition Division's findings on these points.

Opposition ground under Article 100(a) EPC in combination with Article 56 EPC (lack of inventive step)