T 0224/12 - Adversely affected

Key points

" It is the position of the opponent that, due to the absence of arguments in support of the main request at any stage, the patent proprietor was not adversely affected by the decision. The position of the appellant/opponent is not supported by the law. The patent proprietor's main request was refused by the meaning that the patent proprietor was adversely affected by the decision." 

EPO T 0224/12 - link

Reasons for the Decision

1. Admissibility of the appeal

1.1 The main request of the patent proprietor before the opposition division for rejection of the opposition was not allowed.

1.2 According to the minutes of the oral proceedings before the opposition division (section 5) when novelty of the main request was discussed the patentee did not provide any arguments. The decision records in section 4.2 that the patentee did not contradict the novelty objections of the opponent against the main request.

1.3 It is the position of the opponent that, due to the absence of arguments in support of the main request at any stage, the patent proprietor was not adversely affected by the decision.

1.4 The position of the appellant/opponent is not supported by the law.

The patent proprietor's main request was refused by the meaning that the patent proprietor was adversely affected by the decision.

Thus the requirements of Art. 107 EPC are satisfied.

1.5 The appellant/opponent appears in effect to argue that since the patentee did not advance arguments in support of the main request, it was not adversely affected.

However according to R.99 EPC the admissibility of appeal is determined by the notice of appeal. No provision exists in the EPC for basing a decision regarding the admissibility of an appeal on the nature or extent of the arguments advanced in support of a request during the first instance proceedings.

A possible sanction for presenting arguments which should have been presented before the first instance, but which were only submitted on appeal is their exclusion from the appeal proceedings in accordance with Art. 12(4) RPBA. This however has no influence on the admissibility of the appeal.

1.6 The opponent has further argued that, since the patent proprietor was no longer pursuing the main request submitted at the time of filing the appeal i.e. the patent in the form as granted, the appeal had to be seen as now - retroactively - being inadmissible. This argument is likewise not supported by law. According to Art. 107 and 108 EPC and R. 99 EPC the admissibility of an appeal is determined in the light of the facts at the time the appeal is filed.

1.7 Since the patent proprietor was adversely affected by the decision in respect of its main request, the provisions of Art. 107 EPC are satisfied.

Consequently the objection that the appeal of the patent proprietor is inadmissible because the requirements of Art. 107 EPC are not met fails to convince.

2. Main request

2.1 Admissibility

In the statement of grounds of appeal the appellant/patent proprietor pursued as the main request the rejection of the opposition, i.e. maintenance of the patent in the form as granted.

With the second letter of the appeal procedure, in response to the statement of grounds of appeal of the opponent, an amended - restricted - main request corresponding to the claims in the form as upheld by the opposition division was submitted (see section VI, above).

This request was the subject of concerns in the communication of the Board, in particular with respect to the allowability of the amendments having regard to to the presence in the claim of features taken from claims of different categories.

Compared to claim 1 of the auxiliary request underlying the contested decision, the amendments undertaken according to the main request as filed with the letter of 1 December 2015, which merely involved removal of the feature relating to the nature of the catalyst used to obtain the polymer were explicitly stated to be in order to address the above objections of the Board. The dependent claims were - apart from the deletion of claim 2 - identical to the dependent claims of the request underlying the decision under appeal.

The opponent had raised an objection specifically to the definition of the catalyst in claim 1. The patent proprietor had taken position thereon, defending the allowability thereof. However it was only after receipt of the communication, in which the Board set out its preliminary view, that the patent proprietor made the necessary amendments to overcome the objections raised by the opponent.

Although these amendments could have been made at an earlier stage of the proceedings, they are not complex, consisting in the deletion of a feature which, as noted, by the Board in its communication, was not considered to impose any restriction on the product claimed. Therefore that amendment did not result in a change of the matters to be discussed, in particular with respect to the issues of novelty and inventive step.

The appellant/opponent did not argue, let alone show, that the amendment was of such a nature or complexity that it could not be dealt with in the time remaining between the amended request being filed and the oral proceedings.

Consequently, under the present circumstances there is no reason not to admit the new main request to the proceedings.

The main request is admissible.