T 2095/21 - Strawman opponent and Art.15(9) RPBA

Key points

• The decision was taken on 10.10.20213 and issued in writing on 28.03.2024. The public online file shows no items between 13.10.2024  2023(the minutes) and 28.03.2024 (the decision) as of the date of writing (02.04.2024). Hence, no Communication to the parties under Art. 15(9) RPB (to be issued at the end of the three-month period, i.e. by 10.01.2024) is visible. Was the President of the Boards informed (as is required under amended Art. 15(9), which entered into force on 01.01.01.2024)?  
• Note, possibly the delay was for good reason in the case. And possibly the parties were informed with a notification that is in the non-public part of the file. 
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• The opponent is a patent attorney firm. 
• "The appellant [proprietor] submitted that the representative firm was no longer the legitimate opponent because during the oral proceedings before the opposition division they openly admitted that they acted on behalf of a third party. This open admittance not only constituted clear evidence that the opposition was inadmissible, but also created confusion as to the opponent's actual identity. " 
• " The board does not agree with this argumentation. As clarified by decisions G 3/97 and G 4/97 an opposition is not inadmissible purely because the entity named as opponent is acting on behalf of a third party."
• "as it was clarified in G 3/97 and G 4/97 (Headnote 1(d)): "...a circumvention of the law by abuse of process does not arise purely because: a professional representative is acting in his own name on behalf of a client...". The filing of an opposition by a straw man is not as such an abuse of process, but it would require additional facts and evidence, as for instance if it were shown that the representative was acting on behalf of the patent proprietor, or was lacking entitlement to act as a European professional representative. "
•  The opposition was therefore admissibly filed (Article 99(1) in conjunction with Rules 76 and 77 EPC).

EPO 

The link to the decision and (an extract of) the text of the decision are provided after the jump.

T 1408/19 - Only new attacks in apeal; admissibility appeal

Key points

• The opponent appealed (in 2019), basing the appeal only on new attacks. The Board concludes that even if all attacks are inadmissible under Art. 12 RPBA 2007, this does not make the appeal inadmissible. 
•  " The board observes that the respondent [proprietor] did not present any formal legal basis for its argument that the new and arguably inadmissible attack directly leads to inadmissibility of the appeal. The board is not convinced that, apart from the factual basis, the argument is correct in law. The board is not aware of any legal provision, either in the EPC or in the RPBA, that would stipulate inadmissibility of the appeal as the legal consequence where no attacks remain in the appeal as a result of their non-admission. Nor is this supported by the case law. " 
•  " The fact that attacks presented in the appeal may not be admitted in the course of examination of the appeal does not lead to the (retroactive) finding that the appeal was not reasoned (and hence inadmissible), but at most to the dismissal of the appeal. Whether the reasons are suitable for achieving the purpose of the appeal is a question of allowability and not admissibility, at least as long as such reasons are not manifestly insufficient or irrelevant. The board's possible finding on the non-admittance of the attack is based on the board's discretionary powers. By contrast, the usual admissibility conditions of an appeal are stipulated by specific legal provisions, normally requiring that the board examine these conditions ex officio. The board's finding on the admissibility of the appeal is not a discretionary decision, but follows directly from the letter of the law. However, this question need not be decided in the present case, as the board refrained from not admitting the argued new attack, as set out below." 
• The observations of the Board are obiter as the new attack is admitted into the procedure.
  
  
• Regarding the admissibility of the opposition, one prior art document (D2) was identified in the Notice with an incorrect publication number. The Board confirms the decision of the OD that this error does not render the opposition inadmissible. This issue is unclear because, on p.9 of the Notice, one attack is lack of inventive step over a public prior use with D2 or D3. There is no such thing as the partial inadmissibility of a Notice of opposition, so at least the alternative document D3 should make the issue moot.
• The headnote of the decision is about this issue. 
• The Notice was filed by fax in 2016, and patent publication D2 was not attached to it.
• The appeal is dismissed after examination of the substantive grounds.
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EPO 

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

T 1316/20 - Pendency of parent in opposition

Key points

• The patent is granted from a divisional application. According to the opponent, the parent was not pending on the day the divisional was filed. If the EPO finds so during examination, the divisional has no filing date and will be refused.
•  In what possibly has a relation with recent decision T 1482/21 (no review of the decision to grant re-establishment in the priority period during opposition), the Board decides that the pendency oft the parent can not be reviewed in appeal. 
• The Board, in machine translation:  "whether the deficiency of a pending parent application can be challenged in opposition or appeal proceedings. This is to be denied in the present case. First of all, it is recognized that not all deficiencies in an application can also be objected to in opposition proceedings, but only those mentioned in Article 100 EPC. This also applies to deficiencies that are not formalities: a lack of clarity is just as little a reason for an objection as the lack of payment of fees." 
• " According to the appellant, the absence of a pending parent application is a ground for opposition under Article 100(c) EPC. In the opposition, it could be objected that the divisional application went beyond the content of the parent application. However, if there was never a pending parent application, each divisional application went beyond that. This may be formally the case; however, the Board is of the opinion that the provision is concerned with the technical content of the parent application and not with its pendency. To put it another way: the content of the divisional application does not go beyond the parent application simply because the latter was never pending and should therefore be regarded as meaningless nullity, so to speak. From the Board's point of view, the fact that the parent application is not pending cannot mean that priority has not been validly claimed, because claiming priority under Art. 87(2) EPC only requires a valid prior application and not a valid parent application . " 
• As a comment, the switch to Art.87 in the last sentence is not very clear to me. Though I can see why it was brought up, as Art.87 is more frequently examined in opposition.
• Let's see if the Enlarged Board in G 1/22 * declares the issue of the formal entitlement to priority similarly non-reviewable in opposition. (* - not yet available at the time of writing)
• For the examination of novelty under Art.54, you need to know the filing date of the patent, right? How do we know it? Is the filing date mentioned in the DTG irrefutable, i.e. a non-reviewable decision of the Examining Division?
• The issue with the pendency of the parent is that the divisional application was filed in April 2010, and before the expiry of the 31-month period for the parent application, which was a PCT application, and without a request for early processing, and on the same day as the acts for entering the European phase were performed.
• Under the then applicable version of Rule 164(2), with the EPO as ISA, the filing of the divisional made sense.
• Under J 18/09, the divisional could only be filed "once the international application has entered the [regional phase before the EPO]: "It is the very essence of the unitary filing system drawn up by the PCT that in the international phase the international application is subject to the procedural rules of the PCT and not to those of the national laws (possibly divergent from those of the PCT) which may become applicable once the international application has entered the national or regional phase before the competent national or regional office. ", see also r.14 and r.15.
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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." 
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EPO 

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