T 0350/13 - Implicit consent fresh ground

Key points

• A fresh ground of opposition in appeal can only be admitted with the consent of the patent proprietor. An initial substantive rebuttal of the new ground does not amount to implicit consent. In any case, the consent can be later denied by the proprietor.
• The Board appears to indicate that the date of an appealed decision of the OD is that of the written decision, not that of the oral proceedings. 
• The name of the professional representative of a party is sufficient for identifying the appellant in view of admissibility.  Another Board said recently the opposite In T 2561/11, at 2.4 (decision date is that of oral proceedings, not that of written decision). 

T 0350/13 - link

Reasons for the Decision

1. Admissibility of the opponent's appeal

1.1 According to Rule 99(1)(a) EPC the notice of appeal shall contain the name and address of the appellant. According to established case law of the Boards of Appeal the requirements of Rule 99(1)(a) EPC are satisfied if the notice of appeal contains sufficient information for identification of the party (cf. T 624/09). Furthermore, deficiencies concerning the indication of the appellant's name and address do not necessarily need to be remedied within the time limit pursuant to Article 108 EPC, but can be remedied later following an invitation under R 101(2) EPC (cf. T 2330/10).

1.2 In the present case there was sufficient information available for identification of the appealing party, since the professional representative of the opponent which had acted before the opposition division had filed the notice of appeal by indicating the number of the European patent and the decision of the Opposition Division. Thus, considering the aforementioned indications and the history of the file there was sufficient information available to establish beyond reasonable doubt the identity of the appellant within the time limit under Article 108 EPC.

1.3 Moreover, it is to be taken into consideration that the appellant's name and address were submitted within the time limit set by the invitation under Rule 101(2) EPC.

1.4 With regard to J 1/92 cited by the patent proprietor, it is noted that the factual circumstances underlying that decision deviate substantially from the constellation in the present case. In J 1/92 the representative indicated explicitly that the appeal was lodged in his 'own name' making it unmistakably clear that it was not lodged on behalf of the adversely affected party, i.e. the applicant, but on behalf of the representative.

1.5 According to Rule 99(1)(a) EPC the notice of appeal shall contain an indication of the decision impugned. In the notice of appeal the number and the title of the European patent and the patent proprietor's name were indicated. Furthermore it was stated that the decision of the Opposition Division dated October 26, 2012 was appealed. In that regard it is noted that the date of the oral proceedings before the opposition division, in which the decision had been announced orally, was evidently indicated instead of the date of the written decision. Nevertheless, the appellant's intention to appeal the decision of the Opposition Division relating to the European patent indicated in the notice of appeal was clearly expressed.

1.6 In view of the above the Board does not follow the patent proprietor's arguments and comes to the conclusion that the requirements of Rule 99(1)(a) and (b) EPC are met in the present case. Thus, the opponent's appeal is admissible.

2. Admittance of new grounds for opposition

2.1 As found by the Enlarged Board of Appeal in G10/91, fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee.

2.2 In the present case, objections under Article 100(b) EPC and Article 100(c) EPC had not been raised against the claims as granted during the opposition procedure by the opponent. Therefore, in accordance with G10/91, the introduction of these grounds for appeal into the appeal proceedings is dependent on the proprietor giving approval for this. With letter of 19 September 2016 the proprietor explicitly did not agree to these grounds for appeal being introduced into the appeal proceedings.

2.3 The opponent's argument, that the proprietor had implicitly given its approval with respect to Article 100(c) EPC through arguing in response to the opponent's objections, is not persuasive in admitting this ground for opposition. Irrespective of the proprietor at some time responding substantively to the new ground, this cannot be interpreted as an implicit or binding indication that it approves the introduction of this ground into the appeal proceedings. The decision of the Enlarged Board of Appeal is quite unequivocal in this respect, stating in Reasons 18, second last sentence, that '..if the patentee does not agree to the introduction of a fresh ground for opposition, such a ground may not be dealt with in substance in the decision of the Board of Appeal at all' (underlining added by the present Board). It thus follows that, even if a different impression may have previously been inferred by the opponent through the proprietor's actions, with such agreement being specifically denied in the letter of 19 September 2016, the grounds for opposition under Articles 100(b) and (c) EPC are not admitted into the appeal proceedings.