T 1712/10 - Third appeal

Key points

• The present decision is the third appeal decision in this opposition case (filing date 14.08.1995, mention of the grant 29.03.2000).
• The Board confirms the established case law that an appeal is admissible even if the notice of appeal does not contain an explicit address of the appellant, and also if the notice of appeal does not contain an explicit request defining the subject of the appeal.
• After about 16 years of opposition procedure, the patent is revoked. 

EPO T 1712/10 - link 

Summary of Facts and Submissions

I. On 2 August 2010 the appellants (patent proprietors) lodged an appeal (third appeal) against the decision of the opposition division, posted on 4 June 2010, by which European patent No. 0 700 769 was revoked for the third time, this time on the grounds that the subject-matter of claim 1 of the main request and of the auxiliary request did not involve an inventive step, Article 56 EPC 1973. The statement setting out the grounds of appeal was filed on 4 October 2010.

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Reasons for the Decision

1. Admissibility of the appeal

1.1 The notice of appeal contains the name of the proprietor and appellant, the indication "Opposition to European Patent EP 0 700 769 B1" and the statement: "Further to the Opposition Division's letter of 4th June, 2010 reporting the decision revoking the above mentioned European Patent, the Proprietor hereby files a Notice of Appeal in accordance with Articles 106-108 EPC".

The notice of appeal does not contain an explicit address of the appellant, Rule 99(1)(a) EPC.

However, it is established case law that the provisions of Rule 99(1)(a) EPC are deemed to be satisfied if the notice of appeal contains sufficient information for identification of a party, see Case law of the Boards of Appeal (CLBA), 7th Edition, IV.E.2.5.2, in particular page 953, line 8, to page 955, last line.

In the present case the board is of the opinion that the notice of appeal contains sufficient information for identifying the appellant(s), namely appellant/proprietor 1, BP Chemicals Limited, and appellant/proprietor 2, BP Chemicals S.N.C. It may be noticed that current name of appellant 1 is Ineos Sales (UK) Limited.

1.2 The notice of appeal does not contain an explicit request defining the subject of the appeal, cf Rule 99(1)(c) EPC.

It is also established case law that the provisions of Rule 99(1)(c) EPC are deemed to be satisfied if the statement setting out the grounds of appeal indicates the extent to which the decision impugned is to be amended (cf Rule 99(2) EPC). Moreover, when the notice of appeal filed by a patent proprietor is directed against a decision of an opposition division, in which the only ruling is that the patent is revoked (which is the case here), and if said notice contains the wording "(we) hereby file a notice of appeal" or similar, the provisions of Rule 99(1)(c) EPC are also deemed to be satisfied, see CLBA (loc. cit.), in particular page 956, line 13, to page 956, line 30.

1.3 For the above reasons, the appeal is admissible.

2. Admittance of the second auxiliary request into the opposition appeal proceedings

2.1 In exercising its discretion under Article 114(2) EPC 1973, the opposition division did not admit the second auxiliary request, which was filed during the third oral proceedings before the opposition division, into the opposition proceedings, on the grounds that it was late-filed.

The second auxiliary request of the appellant is identical to the second auxiliary request that was not admitted by the opposition division.

2.2 It is established case law that in general "..., it is not the function of a Board of Appeal to review all the facts and circumstances of the case as if it were in the place of the first instance department, in order to decide whether or not it would have exercised such discretion in the same way as the first instance department", see G 7/93, OJ EPO 1994, 775, point 2.6 of the Reasons.

A board of appeal should only overrule the way in which a department of first instance has exercised its discretion it has applied the wrong principles, or not taken account of the right principles, or has acted in an unreasonable way and has thus exceeded the proper limits of its discretion, see G 7/93 (loc. cit.).

The board expressed in its communication (see point II above) that the opposition division did not act in an unreasonable way by not admitting the second auxiliary request into the proceedings, and that therefore it was currently not inclined to admit the second auxiliary request into the opposition appeal proceedings.

Since these findings were not contested, the board has no reason to deviate from them. Consequently, the second auxiliary request of the appellants is not admitted into the opposition appeal proceedings.