T 0944/24 - Main request rejected, appeal inadmissible

Key points

• In the case at hand, the opposition division decided that the patent proprietor's main request did not meet the requirements of Rule 80 EPC ...
• The proprietor appeals. What can go wrong?
• " ... [the OD] admitted the new main request and new auxiliary request 1 submitted by the patent proprietor during the oral proceedings into the proceedings, and considered that the new main request [was allowable]"
• "according to its reasons, the decision under appeal did not accede to the patent proprietor's initial main request. However, it is clear from the file, in particular from the cover page of the decision, point 9 of section I and section III of the decision and section 6.1 of the minutes of the oral proceedings, that the patent has been maintained in amended form based on the main request and the amended description submitted during the oral proceedings. The final main request of the patent proprietor was therefore granted. "
• The proprietor was therefore not adversely affected by the OD's decision, and its appeal was inadmissible.

EPO 

The link to the decision is provided after the jump.

J 0006/23 - Non-existent proprietor

Key points

• In J 12/19,  the patentee went bankrupt during the first instance opposition proceedings and the proceedings were interrupted under Rule 142(1)(b). After some time, the Legal Division announces the intention to resume the proceedings under Rule 142(2). The opponent disagrees, arguing that the insolvency proceedings were terminated by the patentee's dissolution, which is now non-existent. The opponent submits accordingly to the Legal Division. The Legal Division is of the opinion that the opponent is not a party to the proceedings in this respect, disregards the opponent's submissions, and issues a Communication to the opponent stating so. The opponent then files an appeal."
• That decision of the Legal Board of Appeal was issued on 28.04.2021. 
• The Legal Division took a new decision almost two years later, issued on 01.02.2023. That decision was: "rejecting the opponent's request that opposition proceedings be resumed pursuant to Rule 142 EPC with the opponent as the sole party. " The LD intended to resume the procedure with the proprietor as a party. 
• The opponent appealed. The Legal Board issued the present decision on 05.06.2023.
• Meanwhile, the patent has lapsed in all states. 
• On the admissibility of the appeal: "the refusal in the decision under appeal to intend resumption with the opponent alone has no immediate legal consequence either. However, it creates the threat that the LD will proceed to set a date for resumption with the proprietor as well. The opponent strongly disagreeing with the latter way to proceed, it would be required to appeal such a future decision. Due to this threat, a legitimate interest in the present appeal cannot be denied."
• I don't know whether this requirement for a legitimate interest is additional to Article 106 and 107 EPC, or whether it is a way to test "adversely affected" (or "decision")
• At issue is the (releatively new) second sentence of Rule 142(2) EPC: "If, three years after the publication of the date of interruption in the European Patent Bulletin, the European Patent Office has not been informed of the identity of the person authorised to continue the proceedings, it may set a date on which it intends to resume the proceedings of its own motion."
• The LBA clarifies that "intends" should be read as: the EPO may set a date on which the proceedings are resumed.
•  " on the basis of the capacities that Transito NV has under Belgian law, it must be concluded that it fails both prongs of the "legal personality" test of G 3/99."
• G 3/99 r.9: "The legal personality of a named entity under the EPC is decided on the same basis as before national courts, namely the capacity to sue or to be sued in its own name and on its own account." (hello DABUS, by the way, see here)
• "It follows that Transito NV no longer exist under Belgian law."
• "It is a generally recognized principle of national law and also under the EPC that legal entities which do not exist cannot bring or take part in proceedings. Transito N.V. is thus not able to take part in resumed opposition proceedings. 
• "The only way to reconcile the spirit of Rule 142(2), 2nd sentence, EPC, which aims to avoid endless interruptions of proceedings in cases where no person authorized to represent the affected party can be identified, with the aforementioned principle that legal entities which do not exist cannot take part in proceedings, appears to be a resumption of the proceedings without the affected party. 
• "The Legal Board concluded above that, if the present opposition proceedings are to be continued, then they must be continued with the opponent only. The Board must therefore set aside the LD's decision expressing the view that the proceedings are to be continued with both the opponent and the registered patent proprietor Transito NV that has ceased to exist.

  It will be for the LD to exercise its discretion pursuant to Rule 142(2), second sentence, EPC in respect of a possible resumption of the opposition proceedings. If the LD exercises its discretion by resuming the proceedings, then the proceedings will take place with the opponent only until the opposition division in turn subsequently exercises its discretion pursuant to Rule 84(1) EPC. If the opposition division does so by maintaining the continuation of those proceedings, then the opposition division will be bound by the LD's decision to continue them with the opponent only."

• I don't think the LD can arbitrarily keep the procedure interrupted, but we may have to see if the opponent has to appeal on that point as well. 

• I assume the opponent has requested that the proceedings be continued under Rule 84. We will have to see if the OD accedes to this request, or if the opponent will have to file an appeal on that point as well. 

EPO 

The link to the decision is provided after the jump.

T 1789/22 - (I) Two opponents, one appeals, attacks submitted by the other

Key points

• Decision of 12.12.2024; written decision issued on 19.12.2025 (Board 3.3.04; no communication under Art. 15(9) RPBA visible in the online file).
• There were two opponents. Opponent 1 appeals. Opponent 2 and the proprietor do not appeal. Opponent 1 maintains only some of the attacks in their Statement of grounds. Opponent 2 is a party as of right and uses its 'reply' to the appeal to submit additional attacks.
• "The submissions of the party as of right-opponent 2 included objections under lack of novelty in view of document D27 and lack of inventive step where documents D6 and D31 were taken to represent the closest prior art. Since the opposition division took a decision on these lines of attack in favour of the respondent, an appeal should have been filed to have these findings reviewed [*], rather than merely contesting them in the reply to the statement of grounds of appeal. However, as indicated above, the appeal of the appellant did not contest the decision in these respects, therefore these objections are outside the legal and factual framework for review by the board. Their consideration is in principle not excluded but is subject to the discretion accorded to the board under Article 114(2) EPC and Articles 12 and 13 RPBA."
• The Board's exercise of its discretion is intertwined with its decision on the subsequent letter of the appellant (opponent 1) that it agreed with the attacks (objections) of opponent 2.
• " The board notes that the appellant provided no justification for not having raised these objections with the statement of grounds of appeal, and the board cannot see any either. Moreover admitting these several additional attacks would be detrimental to procedural economy and unfair for the respondent, who relied on these parts of the appealed decision not having being contested. Accordingly, the objections filed by the appellant with this letter were not admitted into the appeal proceedings. The same applies to the corresponding objections filed by the part as of right."
• * - Note that this point is a bit tricky. Had the OD revoked the patent as novel over D1 but not inventive over D2, the opponent could not have appealed on the ground of the unfavorable reasoning on novelty (the requirement of being adversely affected, specified in Art. 107, is determined by reference to the order of the decision, not the reasons). 
• By the same token, had the proprietor appealed as well, opponent 2 as a respondent could have submitted the attacks validly in their reply to the appeal.
• 
  
• Furthermore, opponent 1 had attacked only some of the independent claims of the set of claims held allowable by the OD in its statement of grounds, but did not attack independent claim 5 in its statement of grounds.  
• The Board holds a later-filed attack against claim 5 to be inadmissible: " As set out above, the statement of grounds of appeal defines the framework of the appeal and in the present case it did not include novelty of claim 5 of the request held allowable by the opposition division (see points 2., 5. and 5.1). Accordingly, novelty of claim 1 of the main request is not open for review by the board in this appeal proceedings."
• The Board first recalled the principle of the 'extent of the opposition'. The Board then reasoned that: "2. With regard to opposition appeal proceedings, in addition the statement of grounds of appeal determines the object of the appeal proceedings and the legal and factual framework for the review of the appealed decision by the board. In other words, the statement of grounds of appeal determines the extent to which amendment or cancellation of the appealed decision is requested (see e.g. G 9/92, Reasons 1)."
• G 9/92 r.1: "...  Proceedings under the EPC in respect of European patent applications and patents are, with some exceptions, initiated by a party. The initial "request" determines the extent of the proceedings. This is known as the principle of party disposition (ne ultra petita). The present case concerns the question whether the extent of the initial appeal, i.e. the statement in the notice of appeal, affects the extent of the subsequent proceedings, and this has to be examined systematically in conjunction with procedural law under the EPC." (emphasis added)
• G 9/92 is about reformatio in peius, i.e. the subject-matter of the patent (as amended), i.e. the order of the decision and not the reasons for the decision (there is quite some case law on this point). Opponent's 1 request in its notice of appeal was to revoke the patent in its entirety (link).  The TBA acknowledges that G 9/92 does not directly support its reasoning by citing it as 'see ... G 9/92').
• The Board's reasoning seems new to me.
• I also wonder how to reconcile it with the case law that there is no concept of partial inadmissibility of an appeal in the EPC.  
• The Board's headnote 1 is as follows: "1. ... The provisions of Article 107, second sentence, EPC guarantee a non-appealing party the right to participate to pending appeal proceedings. However, they do not provide it an autonomous right to have requests which go beyond the scope of the appeal as defined by the appellant's statement of grounds of appeal, decided by the board (as a direct consequence of G 2/91, Headnote)."
• This headnote is formulated too strongly, in my view.
• The case concerns a non-appealing opponent, not a proprietor submitting claim requests. Furthermore, G2/91 concerns the termination of the appeal if the appellant withdraws his appeal (headnote 1) and the refund of the appeal fee (headnote 2).
• I think the 'reply' of the non-appealing second opponent should be treated as a case amendment under Article 13(1) RPBA, similar to the case where a respondent/appellant uses his reply under Art.12(1)(c) to the appeal of the other appellant as a supplement to his own statement of grounds (treated as an appeal case amendment under Art. 13(1), see T 2701/19).
• See also T 250/20 about cross-party reliance, referring to "established case law according to which, for example, an opponent may rely on a ground of opposition invoked by other opponents either during the opposition proceedings or during any subsequent appeal proceedings". This suggests that Opponent 2 can rely on the Statement of grounds of Opponent 1 and then submit further attacks as case amendments under Art. 13(1).
• "By not filing an appeal, a non-appealing party has not contested the findings of the opposition division, beyond the framework of the appeal filed by the appellant."
• This does not seem correct, to the extent that it suggests that the opponent as a respondent cannot introduce objections against the broader claims (sought by the proprietor as appellant) that were not decided on in the impugned decision. 

EPO 

The link to the decision is provided after the jump.

T 1026/24 - Wrong party as appellant

Key points

• "There is a divergence between the name, the legal structure and the address of the legal persons named as opponent and as appellant in the proceedings."
• "in the notice of appeal, dated 16 July 2024, and in the statement of grounds of appeal, dated 17 September 2024, and in the letter withdrawing the request for oral proceedings, dated 19 March 2025, the appellant was indicated to be: Siemens Gamesa Renewable Energy GmbH & Co. KG."

• "This does not correspond to the notice of opposition which was filed, although on business paper of the appellant, explicitly in the name and on behalf of: Siemens Gamesa Renewable Energy Deutschland GmbH"

• "There seems to be no doubt that the latter company acted as the opponent and remained party to the entire opposition proceedings."

• "A transfer of the status of opponent was never declared and substantiated nor are there any facts on file that might allow for the conclusion that the appellant must be the universal successor of the opponent."

• " There is also no room for interpretation with regard to the appellant's identity that was consistently indicated in the appeal proceedings. No facts and arguments have been submitted in appeal proceedings as to why the appellant should not be the person named in the three written submissions mentioned in paragraph 1.2 above."

• "The appellant had no right to appeal."

•  According to Article 107 EPC, only parties to the proceedings may appeal. As set out above, the appellant was never a party to the opposition proceedings."

• The appeal is rejected as inadmissible.

• No correction under Rule 139 EPC was requested, it seems.

EPO 

The link to the decision can be found after the jump.

T 0387/25 - EPO Customer Service tickets and the electronic file

Key points

• The Board confirms that if the drawings are omitted from the Druckexamplar by the EPO by mistake with an unmarked change, an appeal will be admissible and allowable, notwithstanding Rule 71(5) EPC. Hence,  "[ T 265/20] remained a single decision and was not followed by other boards. "
• The Board notes that the Guidelines are not yet aligned with the case law on the point.
• ""It may be that the examining division refrained from granting interlocutory revision because the Guidelines for Examination (e.g. in Part H, Chapter VI) do not yet properly distinguish between cases where a mistake was already contained in an applicant's request or was explicitly approved by an applicant, and cases like the one at hand: where an examination board [sic], by mistake and unintentionally, deviated from the appellant's latest request when listing the documents intended for grant in a communication under Rule 71(3) EPC and this was neither pointed out to the applicant nor explicitly acknowledged by it."
• "4.1 As outlined above, the drawings were already missing from the A1 publication, which was an error made by the EPO over which the appellants had no influence. The appellants had brought that error to the attention of the EPO (point V.), but there is no indication in the electronic file that the EPO had taken any measures to address this issue, to arrange for a corrected publication of the application and to ensure that this error would not be perpetuated through the examination proceedings and grant of the patent. In fact, neither the appellants' initial enquiry with the EPO (generating a "ticket") nor the emails exchanged with the formalities officer have been documented in the electronic file as they should have been."
• I believe the part in bold is different from current practice, at least any EPO Customer Service tickets are not in the public online part of the file. 
  
  
• There is also an interesting part about the protection of legitimate expectations created by information given by the formalities officer during a phone call. 

EPO 

The link to the decision can be found after the jump.

T 1971/16 - Party as of right's objections disregarded

Key points

•  The patentee and opponent 2 both appeal. Opponent 1 does not appeal.
• Auxiliary request 2 is the set of claims allowed by the OD.
• Opponent 1 as respondent had submitted objections to AR-2 with its reply to the appeal.
• The Board does not admit these objections: "As was also not disputed by the parties, Opponent 1, as respondent, may request that the patent proprietor's appeal be dismissed, but may no longer challenge the maintenance of the patent as amended according to the interlocutory decision (auxiliary request 2). For this reason, the objections and arguments directed against the maintained version are considered inadmissible and are therefore not taken into account in the appeal proceedings."
• The Board then considers the objections of opponent 2 and does not find them to be convincing.
  
  
• As a comment, I don't recall having seen this approach before where objections are personal in the sense that an opponent may rely only on its own objections. 
• cf. T 1675/14 for the first instance proceedings.
• 
  

EPO 

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

T 1992/15 - New patentee

Key points

• The OD revokes the patent. The written decision is dated 10.08.2015. On 05.08.2015, a valid request for registration of a transfer of the patent was filed. The registration under Rule 85  was made on 14.08.2015 with effect as of 05.08.2015. 
• On 08.10.2015, a Notice of appeal was filed in the name of the first patentee.
• The Board decides that this appeal is inadmissible under Article 107.
• "Am 8. Oktober 2015 war die Clariant Finance (BVI) Limited daher nicht mehr Patentinhaberin und konnte demgemäß auch keine rechtswirksame Beschwerde einreichen."
• A second appeal was filed on 26.11.2015 in the name of the new patentee. This date is clearly outside the two-month period when calculated from 20.08.2015.
• However, here we enter EQE paper D territory. Namely, the question is whether the written decision of 10.08.2015 was validly notified to the patentee. Without a valid notification, the period for filing an appeal does begin (but a Notice of appeal can already be filed before the notification).
• "Die Zulässigkeit dieser Beschwerde hängt davon ab, ob die angefochtene Entscheidung der Einspruchsabteilung einer beschwerdeberechtigten Partei mindestens zwei Monate und 10 Tage vor Beschwerdeerhebung, das heißt vor dem 16. September 2015 (vgl. Artikel 108, Regel 126(2) EPÜ), wirksam zugestellt wurde - in diesem Fall wäre die Beschwerde vom 26. November 2015 verspätet und damit unzulässig - oder ob eine wirksame Zustellung später oder gar nicht erfolgt ist - in diesem Fall wäre die Beschwerde rechtzeitig eingelegt und damit zulässig. "
• The decision of the OD was notified to a professional representative. The question is if the representative was an authorized representative of the party that was the patentee, at the relevant date.
• The transfer of the patent was effective 05.08.2015, such that the decision could not be notified to the representative. Moreover, the request of 05.08.2015 mentioned a new representative for the new patentee.
• Hence, the second appeal was timely filed.
• For the admissibility of the Main Request, the Board applies Art. 13 RPBA 2007 because the first summons was issued before 01.01.2020.

 

EPO 

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

T 1820/18 - Relying on other opponent's evidence

Key points

•  Fun with multiple opponents (and joint opponents, but that's less relevant).
• "In the present appeal proceedings, joint opponents 1 [former respondent] took an active part, whereas opponent 2 (respondent) did not file any requests or submissions in the written proceedings. The day before the scheduled oral proceedings [] joint opponents 1 withdrew their opposition []. At the oral proceedings, the respondent [opponent 2] indicated that it intended to rely on the submissions of former joint opponents 1. The appellant [patentee] objected to this, arguing that presenting requests and arguments and raising objections for the first time at the oral proceedings was too late and that none of these submission should be admitted." 
• " According to Article 99(3) EPC, opponents are parties to the opposition proceedings as well as the proprietor of the patent. It is clear from this provision that several admissible oppositions do not initiate a corresponding number of parallel opposition proceedings, but only a single [one] (T 270/94, point 2.1 of the Reasons; T 656/94, point 7 of the Reasons; T 620/99, point 1 of the Reasons). All grounds of opposition raised by the various opponents, as well as the facts, evidence and arguments presented by them, form the legal and factual framework within which the substantive examination of the opposition is to be conducted. 
• " None of the parties involved in the opposition proceedings can be prevented from adopting facts, evidence and arguments presented in due time by another party (T 270/94, point 2.1 of the Reasons; T 620/99, point 1 of the Reasons; T 863/96, point 2 of the Reasons; see also T 154/95, point 2 of the Reasons: even documents originating from an opposition that has been declared inadmissible are allowed [)." 
• " The same applies to opposition-appeal proceedings. All parties to the opposition proceedings are necessarily parties to any subsequent appeal proceedings (Article 107 EPC). It is therefore not possible to split the appeal proceedings into different procedures, each dealing separately with the grounds for opposition and the facts, evidence and arguments presented by the individual opponent concerned (T 790/03, point 2.1 of the Reasons). Therefore, each opponent can rely on any grounds, facts, evidence and arguments duly submitted by other opponents (T 620/99, point 1 of the Reasons; T 790/03, point 2.1 of the Reasons). Consequently, the board allowed the respondent to rely on the submissions made by former joint opponents 1 to the extent that these did not give rise to an objection of late filing." 
• 
  

EPO 

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

T 0408/21 - Allowable appeal against grant

 Key points

• The Board considers the appeal of the applicant against the grant to be admissible and allowable. 
• In the Intention to grant, the drawings were no longer included, without this being marked in any way. There had been no amendment of the drawings. The applicant did not notice and paid the fee and filed the translated claims. 
• “Normally the documents indicated in a communication according to Rule 71(3) EPC correspond to the applicant's request and to the examining division's intention; however, in a case where there appears to be severe doubts as to whether the documents indicated in Rule 71(3) EPC were actually those intended to be granted by the examining division, the Board considers the [herein after described] clarification of the "true will" of the examining division an appropriate means.”\
• “When trying to clarify the intention behind an action or request, this is frequently done in the Case Law of the Boards of Appeal by identifying the "true will" of the actors in a case. This applies to the will of the applicant/appellant [] as well as of the examining division (e.g. T 843/03, point 1 of the Reasons; T 762/05, point 1 of the Reasons; T 1869/12, headnote). Even the Enlarged Board's decision, G 1/12, elaborates in detail on the notion of the "true intention" behind an action performed”
• “the Board concludes that the examining division did not indicate in the communication according to Rule 71(3) EPC the text it intended to grant for the following reasons:”
• “The examining division therefore did not communicate the text it intended to grant by using Form 2004C. Following T 2081/16 (point 1.4.5 of the Reasons) and T 1003/19 (point 2.4.5 of the Reasons), Rule 71(5) EPC correspondingly does not apply in this case, as in the step preceding the deemed approval the applicant has to be informed of the text in which the examining division intends to grant the patent according to Rule 71(3) EPC. Although the (then) applicant received a Rule 71(3) EPC communication, the documents indicated were not those which the examining division intended to grant.”
• “The Board is aware of decision T 265/20, in which the competent Board did not follow the approach of the above-cited decisions T 1003/19 and T 2081/16 without considering it necessary to refer a question to the Enlarged Board of Appeal. This case is distinguished from said decision not least in the fact that, as outlined above, the Board could identify convincing reasons why the examining division's true intention was not reflected by the text of the Rule 71(3) EPC communication, whereas the Board in case T 265/20 was not in a position to draw such a conclusion for "the case at hand" ”
• As a comment, I don't see a relevant difference in the facts. The present Board does not identify the actual error of the Formalities Officer.
• “This Board considers that the detailed reasons given in T 1003/19 and T 2081/16 are fully convincing and, in cases such as this, lead to a result that prevents the patent applicant from being seriously prejudiced by the absence of a possibility to request corrections under Rule 140 EPC (see G 1/10, points 8 to 12 of the Reasons). Therefore, the Board sees no need for and refrains from its own referral to the Enlarged Board.”

T 0408/21 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t210408eu1.html

Summary of Facts and Submissions

I. The applicant's (appellant's) appeal lies from the examining division's decision dated 14 January 2021 to grant a patent on the basis of application documents as indicated in a communication under Rule 71(3) EPC dated 24 August 2020 following the examination of European patent application No. 13 855 497.7.

II. The original application contained

- description pages 1 to 14,

- claims 1 to 19 and

- drawing sheets 1/6 to 6/6 with figures 1, 2a, 2b, 3, 4 and 5.

III. In the extended European search report all parts indicated above were properly listed. In the course of examination proceedings the examining division issued communications pursuant to Article 94(3) EPC on 2 November 2017, 11 July 2018 and 12 August 2019. Throughout the proceedings before the examining division, amendment or deletion of the drawing sheets was never suggested by the examining division nor requested by the appellant.

IV. On 24 August 2020 a communication under Rule 71(3) EPC was sent to the appellant informing them of the examining division's intention to grant a European patent on the basis of its application, listing the following parts:

T 0646/20 - Addition of further designated states after grant (no)

 Key points

• “This is a case where the patentee appeals against the grant of its own patent. Most of the arguments revolve around the question of whether the patentee was adversely affected by such grant, but also around questions on the interpretation of the remedy of "further processing" under Art. 121 EPC.”
• “European patent application 07747361 [] was filed on 2 April 2007, that is, before the EPC 2000 came into force on 13 December 2007. Under the EPC 1973, EPC Member States had to be designated individually, and a designation fee for each Member State had to be paid. In the present case, designation fees for five Member States (DE, DK, ES, GB and PT) were paid, but not for the others. [] In regard of the other Member States and Extension States, a "noting of loss of rights pursuant to Rule 112(1) EPC" (in the following "Notification") was sent to the applicant's representative on 5 December 2008. ... The appellant states that the Notification was never received, which the Board under Rule 125 (4) EPC has to accept in the absence of any proof to the contrary.”
• “On 4 July 2019, the Office issued the decision to grant (now subject to appeal) that indicated 31 July as the date when the decision to grant would be published in the European Patent Bulletin. On the very day of 31 July 2019, the applicant filed a request for further processing in regard of the loss of rights for the remaining EPC Member States and Extension States communicated in the Notification of 2008, but not received by the applicant. With this request, the applicant filed the corresponding fee for further processing and the designation fees for the remainder of the EPC Member States and Extension States. Against the decision to grant, the appellant on 12 September 2019 filed a notice of appeal, paid the appeal fee on the same day and supplied the reasons on 13 November 2019.”
• The question is whether the appeal is admissible, in particular, whether the appellant is adversely affected. The Board finds that the appellant is not adversely affected by the decision to grant because it had paid the grant fee; according to the Board this includes approval of the designated states intended in the Druckexemplar
• The issue is not entirely clear to me. Rule 71(3) in the version applicable between 01.04.2009 and 31.03.2012 read "he shall be deemed to have approved the text intended for grant."  (OJ 2008 p.513). However, Rule 71(5) in the version in force since 2012 reads "he shall be deemed to have approved the text communicated to him under paragraph 3 and verified the bibliographic data" (OJ 2010 p.637). The intention to grant under Rule 71(3) was issued in April 2019 in the present case.
• The appellant argues that further processing was still available, the 2008 Notice of loss of rights never having been properly notified. “Not least in light of the appellant's argument that the availability of the remedy of further processing at the time the decision was rendered constituted an adverse effect (quod non), the Board finds it appropriate to address this issue.”
• “The Board accepts that the remedy of further processing does not require a pending application at the time the request is filed. But already the term "further processing of an application" indicates that it requires an application. An application that is deemed withdrawn can return to the stage of a pending application once the request for further processing is successful, but an application that has been granted cannot. An application that has turned into a granted patent cannot be further processed as an application”
• “Given the Board's interpretation of an applicant's approval in response to a communication under Rule 71(3), the Board further observes that even in the absence of receiving the Notification of loss of rights, the two-months period as specified in Rule 135 EPC should commence from the date of the Communication [under Rule 71(3) EPC]. This was the point in time when it fell on the applicant to check the complete file of its application at least in regard of the text and designated Member States mentioned in the Communication, and thus the point in time when the applicant should have had constructive knowledge of the designation of five Member States and the failure to designate the others. ”
• “Only in passing, the Board observes that the notification of a loss of rights under Rule 112(1) EPC is a "voluntary service" of the EPO (Case Law, 9**(th) ed. 2019, III.K.4.1), and the Board has some reservations as to whether the lack of receipt of such notice can indeed allow the applicant to request further processing even years after such notification has been dispatched.”
• I'm not sure if CLBA III.K.4.1 is very helpful on this point, as it seems to summarize J7/92 regarding renewal fees and re-establishment after failure to pay with surcharge. It would be rather strange if the EPO would not send out a Notice of loss of rights for cases where further processing is available.
• In my view, the EPO should docket a check for confirmation of receipt and if no confirmation is obtained, proceed with public notification under Rule 129 EPC (after the second attempt under current Rule 129 EPC. 
  
  
• As a bit of nit-picking, the usual phrasing is Contracting States of the EPC (not Member States). Moreover, for extension states, extension fees must be paid (not designation fees). Further, on the EPO website, the decision was given the catchword "Addition of further Designation States after grant", probably 'Designated States' was intended. Finally, the old designation fee system also applies for European applications filed between 13.12.2007 (entry into force of the EPC 2000) and 01.04.2009, see the current text of Rfees2(2). Nevertheless, it is correct that the application at issue was filed after the entry into force of EPC 2000 and that “Under the EPC 1973, EPC [Contracting States] had to be designated individually, and a designation fee for each [Contracting] State had to be paid.”

T 0646/20

https://www.epo.org/law-practice/case-law-appeals/recent/t200646eu1.html

Reasons for the Decision

1. Admissibility of the Appeal

1.1 It is good law that in order to correct the designation of Member States in a decision to grant, the only available remedy is to file an appeal against such decision (decision T 493/08 of 29 September 2009, point 6.2.1 of the reasons). Yet in order to file an appeal under Art. 107 EPC, the appellant must be adversely affected. This is questionable in a case where the applicant has approved the text intended for grant and the corresponding bibliographical data as set out in the Communication. The Enlarged Board of Appeal has so held in a case where the applicant after having approved the text intended for grant appealed against the decision to grant in order to obtain a correction of the granted patent (decision G 1/10 published in OJ 2013, 194).

G 0002/19 - Exceptions to the right to oral proceedings

Key points

• The full written decision in G2/19 was recently issued. The order was already announced during the oral proceedings:
  1. A third party within the meaning of Article 115 EPC who has filed an appeal against a decision to grant a European patent has no right to have its request for an order that examination proceedings in respect of the European patent are re-opened for the purpose of removing allegedly unclear claims (Article 84 EPC) heard at oral proceedings before a board of appeal of the European Patent Office. An appeal filed in such a way has no suspensive effect
  2. Oral proceedings before the boards of appeal at their site in Haar do not infringe Articles 113(1) and 116(1) EPC.
•  As to the place of oral proceedings, the EBA notes that the starting point is that the place and time of oral proceedings can have a connection with the right to be heard. Choosing a place or time that is entirely out of the ordinary can give the impression as a defective willingness (of the Board) to engage with the party's concerns. However, this is not seriously debated with regards to the relocation of the place of oral proceedings from Munich to Haar. 
• So the next time the Board summons you in Tokio and/or on Sundays, you can invoke Articles 113 and 116.
• The EBA notes that Article 116(1) EPC allows for exceptions; the circumstances of the underlying case justify such an exception. The EBA notes that Article 116(1) EPC applies to all kinds of procedures before the EPO. 
• "Diese Vielfalt im Anwendungsbereich spricht dagegen, Artikel 116 (1) Satz 1 EPÜ gleichsam Absolutheitscharakter beizulegen. Die Norm ist vom Konventionsgeber ersichtlich als Grundsatzregelung für die typischen Fallgestaltungen gedacht, mit denen die Verfahrensorgane des Europäischen Patentamts in ihrer täglichen Praxis konfrontiert sind. Ausnahmen vom Grundsatz sind aber nicht ausgeschlossen, wenn die Anwendung aufgrund der besonderen Umstände des Einzelfalls sinnwidrig wäre. So verhält es sich im Ausgangsverfahren."
• The EBA notes that the appellant is not a party to the grant proceedings (Article 115) and hence is not entitled to appeal (Article 107). 
• The EBA makes an interesting remark about Article 115, namely that the Examining Divisions are obliged to take note of the Third Party Observations. The EBA then states that  "Ungeachtet der Frage, inwieweit ein Verstoß dagegen justiziabel ist," the Examining Division had taken note of the TPO's at issue, according to the file. As a comment, I wonder if this means that answer 1 above is not absolute, i.e. that appeal is in fact possible in the event that the file does not show that the ED had taken note of the TPO's.
• The EBA discussed one decision of a national court, namely BGH X ZR 95/05. As a comment, I don't know if there are no decision of other national courts (FR, GB, NL) on the topic. It is always particular to see only a German national decision being discussed in German language EPO proceedings.
• Now for the reasons why there is an exception to Article 116(1) in this case:
"Artikel 116 (1) Satz 1 EPÜ ist vielmehr dahin einschränkend auszulegen, dass die bloße formale Position als faktischer Beteiligter am Beschwerdeverfahren nicht ausreicht, um die Durchführung einer mündlichen Verhandlung verlangen zu können, wenn der Petent, wie hier, nicht zur Beschwerdeeinlegung befugt ist, weil er im Rechtssinne nicht am vorangegangenen Verfahren beteiligt war oder wenn er – was hier zugleich vorliegt - einen der Beschwerde nicht zugänglichen Gegenstand verfolgt. "
• In the above, "Petent" means petitioner. I'm not sure why the EBA uses that term instead of "appellant" ("Beschwerdeführer"). The two grounds are hence 1) the appellant was not a party to the first instance proceedings and 2) the appellant 'pursues an object which is not accessible to the appeal'
• The effect is that the Board can reject the appeal as inadmissible "ohne Einhaltung weiterer prozessualer Formalitäten" (as in G1/97), i.e. without oral proceedings and (in view of G1/97) without giving the appellant an opportunity to comment under Article 113 EPC.
• The appeal also lacks suspensive effect. The EBA finds that Article 106(1) s.2 has a general character, just as Article 116. "Es besteht hingegen kein anerkennenswertes Interesse daran, die aufschiebende Wirkung auch einem Rechtsbehelf beizulegen, der, wie die Beschwerde eines Dritten wegen unklarer Ansprüche, keinen Rückhalt im Europäischen Patentübereinkommen hat und deshalb offensichtlich unzulässig ist. Dem ist durch eine entsprechende Ausnahme von der Grundsatzregelung in Artikel 106 (1) Satz 2 EPÜ Rechnung zu tragen. 
• As a comment, the referral was completely silent on the suspensive effect. I am not sure if there is precedent for the EBA answering more questions than those referred. 
• As to admissibility of the referral, the EBA finds that the second question (answer 1 above) is admissible. The fact that the appeal is inadmissible, does not make the referral inadmissible (contrary to the President's submissions). The first question of the TBA is inadmissible, because the second question already fully covers the Board's need for clarification. In contrast, the first question of the TBA involved a generalisation to all cases wherein the appeal appears inadmissible "at first sight". The EBA notes that this is an undefined legal term, which is not derived from the EPC and which is not defined in the referral decision.  
• Yet, the EBA considers the appeal to be an "offensichtlich unzulässigen Rechtsbehelfs". As a comment, apparently, this legal concept is sufficiently clear, in view of the EBA whereas the legal concept of "at first sight" inadmissible appeal (used by the TBA in its first question) was not, according to the EBA. "Offensichtlich unzulässig ist ein Rechtsbehelf etwa dann, wenn er von einer zur Rechtsmitteleinlegung nicht befugten Person stammt (hier: Dritter im Sinne von Artikel 115 EPÜ), oder wenn damit ein Beschwerdeziel verfolgt werden soll, das vom Europäischen Patentübereinkommen nicht als Gegenstand einer Beschwerde nach Artikel 106 (1) EPÜ anerkannt, sondern ausgeschlossen ist (hier: Beseitigung von vermeintlichen Undeutlichkeiten der Patentansprüche im Sinne von Artikel 84 EPÜ)."  (emphasis added).
• As a comment, the word "etwa" ("for example") may indicate that the exception also applies to other kinds of inadmissible appeals. It seems to me that the EBA only gives two examples of  " "offensichtlich unzulässigen Rechtsbehelfs" and I have found no definition of the term in G2/19. Moreover, the EBA does not seem to indicate what is the difference between a normally inadmissible appeal and an "offensichtlich unzulässigen Rechtsbehelfs". Comments (especially of German native speakers) are welcome; I have to say that I don't find G2/19 a very easy read.
• The EBA states that  "Ergänzend ist klarzustellen, dass die Einlegung eines aufgrund solcher Umstände offensichtlich unzulässigen Rechtsbehelfs konsequenterweise keine aufschiebende Wirkung entfaltet." So, "offensichtlich unzulässigen" appeals lack suspensive effect. This is a useful addition to the literature (e.g. Visser, Art.106(1):2 and the MGK discussed therein). However, in my view, the EBA's reasoning would have benefited from a definition of "offensichtlich unzulässigen" appeals rather than the indication of two examples. The underlying issue could be whether a patentee can appeal (timely) against the grant of his own patent (in order to file a divisional application during the appeal proceedings).
• Edited 04.10.2019 19:30

EPO G 2/19 G2/19 G0002/19 G 0002/19 - link

Headnote

(link)

1. A third party within the meaning of Article 115 EPC who has filed an appeal against a decision to grant a European patent has no right to have its request for an order that examination proceedings in respect of the European patent are re-opened for the purpose of removing allegedly unclear claims (Article 84 EPC) heard at oral proceedings before a board of appeal of the European Patent Office. An appeal filed in such a way has no suspensive effect.
2. Oral proceedings before the boards of appeal at their site in Haar do not infringe Articles 113(1) and 116(1) EPC.

Sachverhalt und Anträge

I. Vor der Technischen Beschwerdekammer 3.5.03 ist das Verfahren T 831/17 anhängig, das sich auf die Erteilung des europäischen Patents Nr. 2 378 735 (im Folgenden: Streitpatent) am 12. Januar 2017 bezieht. Auf die Erteilung ist am 8. Februar 2017 im Europäischen Patentblatt hingewiesen worden. Das Streitpatent geht auf eine Teilanmeldung aus der früheren europäischen Patentanmeldung Nr. 06113477.1 (im Folgenden: Stammanmeldung) zurück und betrifft ein Verfahren zum Betreiben eines Mobilfunknetzes mit mehreren nebengeordneten Ansprüchen. Patentanspruch 1 lautet:

T 0243/14 - Multiple independent claims in opposition

Key points

• Rule 43(2) does not apply in opposition. If claim 1 as granted is not inventive, you can split it up in two independent claims, with two different and unrelated features that each provide inventive step. The patentee did precisely this in the present case in Aux Req 1 before the OD. However, the procedural status becomes not so straightforward. 
• The OD did not admit AR-1, the Board does admit it. The OD found AR-2 with only one of the two independent claims (of AR-1) to be allowable. The opponent did not appeal. Therefore, in AR-1 with two independent claims, only the second independent claim (claim 3) is open to examination in appeal. 

IV. The decision was based on the claims of the patent as granted as main request and two auxiliary requests.

The differences in auxiliary request 1 compared to the main request, insofar as relevant to the present decision were that:

- Claim 1 specified the chemical nature of the initiating functional groups;

- Claim 3 - newly introduced as a further independent claim - differed from granted claim 1 by specifying that:

"said photoreactive polymer has at least five initiating functional groups on the dendritic polymer core".

Auxiliary request 2 differed from auxiliary request 1 in deletion of claim 3 with consequential renumbering of the remaining claims.

V. According to the decision the main request did not meet the requirements of Article 56 EPC. [] Auxiliary request 1, which had been filed during the oral proceedings was not admitted on the grounds that the amendment represented by claim 3 thereof, relying on features of the description, could not have been expected by the opponent.

Auxiliary request 2 also filed in the oral proceedings, but lacking claim 3 of the first auxiliary request was held to meet the requirements of Article 56 EPC since there was no incentive in the prior art to provide a photoreactive polymer having the defined initiator groups and co-initiators bound to a hyperbranched polymer core.

VI. The patent proprietor filed an appeal against the decision.

Reasons for the Decision

1. Admissibility of the main request.

T 0327/13 - Appeal with broader claims inadmissible

EPO T 327/13

For the decision, click here. [C]

Key points

• The OD found claim 1 of the patent as granted (Main Req.) to be not novel, and held claim 3 (Aux. Req. 1) to be allowable.
• In appeal, the patentee submits a main request, with two independent claims, corresponding to claims 2 and 3 of the patent as granted. 
• Hence, the patentee does not defend the Main Request as filed before the OD. 
• The Board decides that the appeal is inadmissible under Article 107 (not adversely affected) and Rule 99(2) (no substantiation).
• Compare T 1682/13 for a different result of the admissibility an appeal with broader claims in appeal.

Reasons for the Decision

1. The contested decision

1.1 The Opposition Division refused the proprietors' main request for lack of novelty of claim 1 in view of D1, and held that claim 1 of the proprietors' auxiliary request 1 was allowable.

1.2 The subject-matter of claim 1 of the main and auxiliary request 1 addressed in the decision corresponds essentially to that of granted claim 1 and granted dependent claim 3, respectively.

T 0837/13 - Admissibility appeal and translated appellant name

EPO T 837/13 

For the decision, click here

Key point

• An inconsistent translation of the name of the Japanese appellant does not render the appeal inadmissible.
• Another point was validity of priority in view of the requirement of " same invention" . The Board finds that although for valid priority, the priority-claiming application should not solve a new problem different and not derivable from the problem posed in the priority document (T647/97), it is not required for the priority-claiming application to address all problems solved by the priority application. 

Reasons for the Decision

1. Admissibility of the appeal

The term "Kabushiki Kaisha" refers to a defined legal company status in Japanese law, and is commonly translated into English as "Company", "Corporation" or "Incorporated". In the notice of opposition, the appellant already used both names synonymously: whereas "Terumo Kabushiki Kaisha" was inserted on Form 2300.1, III, the very first page of the notice indicates "Terumo Corp. ./. EP 1 341 482 OrbusNeich Medical, Inc.". Thus, "Terumo Corporation" was simply used as a translation of "Terumo Kabushiki Kaisha" referring to the same (identical) legal entity, the appellant therefore having been party to the opposition proceedings, having been adversely affected by the decision under appeal and thus being entitled to appeal (Article 107 EPC).

With regard to the incorrect indication of the publication number of the attacked patent in the notice of appeal, it has to be noted that the further identifying data, i.e. the application number, the proprietor's name as well as the decision date are all consistent. In this context the Board notes that the date indicated by the appellant corresponds to the date printed on the decision itself, which is also the date from which the respective time limits are calculated. The alleged inconsistency in the date of the decision - brought forward by the respondent, who was of the opinion that the date of the announced order of the decision at the oral proceedings was decisive - is thus not present. Furthermore, the publication number identifying the patent only deviates in one digit from the correct one. From the consistent, redundant further information in the notice of appeal it is, however, immediately evident which decision was appealed, and the appeal is therefore admissible.

After the jump: the priority issue.

T 1569/11 - No appeal against reasons only

T 1569/11

For the decision, click here

Key point

• In this case, the Opponents had tried to appeal a decision to revoke the patent, because the OD had revoked the patent only on the ground of Art. 100(b) EPC and not (also) under Art. 100(c) EPC. These appeals were, of course, inadmissible. The Opponents are respondents (parties as of right) only. 
" Thus, the opponents I and III do not seek to challenge the decision of the Opposition Division (i.e. revocation of the patent) but the reasons within the decision. In particular, the opponents wish to see the patent found invalid under Article 100(c) EPC. In doing so they misunderstand the nature and purpose of opposition appeal proceedings [...] "
• Both Opponents were represented by European patent attorneys of two of the larger firms. 

Reasons for the Decision

1. Admissibility of the appeals of the opponents I and III

1.1 An appeal is open to any party adversely affected by a decision (Article 107 EPC). The decision of the opposition division was to revoke the patent. In this sense the decision was fully consistent with the request of the opponents in the opposition procedure that the patent be revoked in its entirety. The opponents I and III were thus not adversely affected by the decision. Therefore, the appeals of opponents I and III are inadmissible.

1.2 It may be noted that it is irrelevant in this context that maintenance of the patent was not found to be prejudiced by the ground of opposition under Article 100(c) EPC, on which the opponents had failed to convince the opposition division, since it was found to be prejudiced by the ground of opposition under Article 100(b) EPC. Thus, the opponents I and III do not seek to challenge the decision of the Opposition Division (i.e. revocation of the patent) but the reasons within the decision. In particular, the opponents wish to see the patent found invalid under Article 100(c) EPC. In doing so they misunderstand the nature and purpose of opposition appeal proceedings which are not to re-examine a patent but to decide whether or not a first instance decision is correct (cf. T 854/02 point 3.2 of the reasons; T 437/98, OJ 2001, 231, point 2.2 of the reasons; T 193/07, point 2.3 of the reasons).

1.3 However, all the opponents have the status of respondents (parties as of right) in accordance with Article 107 EPC. Although the opponents OI and OIII had filed their submissions as grounds of appeal, and ultimately these appeals were found to be inadmissible by the Board, does not detract from the fact that the essence of the opponents' submissions is unambiguous in challenging a particular part of the decision where the opposition division had found in favour of the proprietor. As stated in the Board's communication issued under Article 15(1) RPBA, the objections made by the opponents OI and OIII (in their status as respondents) are simply to be considered as those of respondents in the admissible appeal of the proprietor.

T 0614/13 - Admissibility of intervention

T 0614/13 

For the decision, click here ([C] / DE)

Key points

• The case is about admissibility of an intervention by an alleged infringer, since the three month  period of Rule 89 EPC was triggered by the serving of a writ in China of which the precise date was difficult to prove. 
• A party intervening in opposition can appeal the decision of the OD holding the intervention to be inadmissible as being late filed after the three month period of Rule 89. 
• In this case, the period of about six months between the filing of the complaint with the German court and the serving the writ in China under the 1965 The Hague Service Convention, does not change the fact that the three month period of Rule 89 started from the receipt of the writ by the defendant.  
• The case is interesting since the patentee disputed admissibility of the appeal, of the intervention, and of the documents filed as evidence of the date of serving of the writ. 
• Refusal of the remittal to the OD requested by patent proprietor and intervener (not by other opponent). 

Sachverhalt und Anträge

I. Die Beschwerde der Einsprechenden/Beitretenden Kingfa Sci. & Tech. Co. Ltd. (Beitretende) richtet sich gegen die auf die mündliche Verhandlung vom 14. Dezember 2012 ergangene Entscheidung der Einspruchsabteilung vom 22. Januar 2013. Mit dieser Entscheidung hat die Einspruchsabteilung u.a. den "… Einspruch der Einsprechenden Kingfa Sci. & Tech. Co. Ltd. … als unzulässig verworfen". Die Beitretende habe nicht hinreichend nachgewiesen, dass ihr die Klageschrift (beim Landgericht Düsseldorf von der Patentinhaberin gegen die Beitretende eingereichte Klage auf Verletzung des Streitpatents) erst am 3. Juli 2012 zugestellt wurde, und damit die Erklärung des Beitritts mit Schreiben vom 27. September 2012 rechtzeitig erfolgte.

Mit der angefochtenen Entscheidung hat die Einspruchsabteilung zugleich den Einspruch der Einsprechenden Arkema France (Einsprechende 1) zurückgewiesen. Die Einsprechende 1 hat gegen die Entscheidung der Einspruchsabteilung ebenfalls Beschwerde erhoben.

II. Mit ihrem Schreiben vom 27. September 2012 hat die Beitretende u.a. die Dokumente D 13 und D 14 vorgelegt. Danach - insoweit zwischen den Beteiligten unstreitig - hat die Patentinhaberin gegen die Kingfa Sci. & Tech. Co. Ltd. am 3. November 2011 auf der Grundlage des Streitpatents eine Verletzungsklage beim Landgericht Düsseldorf (Az: 4b O 168/11) eingereicht (D 13). Das Landgericht Düsseldorf hat dann mit Datum vom 11. Januar 2012 einen Antrag auf Zustellung der Klage an das Bureau of International Judicial Assistance, Ministry of Justice der Volksrepublik China nach dem "Übereinkommen über die Zustellung gerichtlicher und außergerichtlicher Schriftstücke im Ausland in Zivil- oder Handelsachen, unterzeichnet in Den Haag am 15. November 1965" ("Haager Zustellungsübereinkommen") gerichtet (D 14).