T 0186/15 - Withdrawing request oral proceedings

Key points

• In this opposition appeal, the opponent had withdrawing its request for oral proceedings before the opposition division in response to the summons. The opponent appealed against the OD's decision to maintain the patent according to the main requests.
• The patent proprietor argues that the appeal is therefore inadmissible. The Board does not agree.  " The appellant merely withdrew its request for oral proceedings. It unambiguously stated that it wanted to continue the proceedings [] explicitly upheld its request that the patent be revoked in full [], and provided arguments as to why the claimed invention was not sufficiently disclosed. As the opposition division decided to maintain the patent in the form of the then pending main request, the appellant is adversely affected by the decision, and its appeal is thus admissible" 

EPO T 0186/15 - link 

Reasons for the Decision

Admissibility of the appeal

1. With the response to the grounds of opposition on 22 January 2014, i.e. at the earliest opportunity during opposition proceedings, the respondent filed a new main request.

On 27 February 2014, the opposition division summoned the parties to oral proceedings, providing a full substantiation of its view that the subject-matter of the main request of the respondent was novel and inventive, and the claimed invention sufficiently disclosed.

With a letter dated 30 September 2014, the appellant withdrew its request for oral proceedings in view of the amendments made, submitted further arguments on the issue of sufficiency of disclosure, and explicitly maintained its request that the patent be revoked.

2. The respondent requested that the appeal be rejected as inadmissible, since the appellant was not adversely affected by the decision of the opposition division within the meaning of Article 107 EPC, having tacitly accepted that the opposition division would follow its opinion as expressed in the annex to the summons to oral proceedings and decide that the main request fulfilled the requirements of the EPC.

2.1 However, during the opposition proceedings, the appellant merely withdrew its request for oral proceedings. It unambiguously stated that it wanted to continue the proceedings (page 1, first paragraph), explicitly upheld its request that the patent be revoked in full (page 3, last paragraph), and provided arguments as to why the claimed invention was not sufficiently disclosed.

As the opposition division decided to maintain the patent in the form of the then pending main request, the appellant is adversely affected by the decision, and its appeal is thus admissible (Article 107 EPC).

Scope of the appeal

3. The respondent requested that, if the appeal were considered admissible, its scope be limited to the ground of opposition under Article 100(b) EPC. The opponent only had a right to appeal issues which had been properly raised in opposition. As the appellant filed no arguments with respect to the grounds under Article 100(a) EPC in response to the positive preliminary opinion of the opposition division, it could not further rely on this ground in these appeal proceedings. Attempting to have a full re-hearing of the case before the board was an abuse of procedure.

4. However, Article 100(a) EPC was a ground of opposition originally invoked and sufficiently substantiated in opposition proceedings, whose admissibility was not called into question before the opposition division. The division took a decision on novelty and inventive step in the decision under appeal on the basis of the evidence and arguments provided by the parties. The fact that the appellant did not reply to the preliminary opinion of the opposition division on these issues does not mean that it agreed with the conclusions of the opposition division on the question of novelty and inventive step. Under these circumstances, the board does not see any reason why the appellant could not rely on the grounds of opposition defined in Article 100(a) EPC in these appeal proceedings (see also G 1/88).

5. The respondent cited T 299/89 in support of its case. However, this decision dealt with a situation where only part of the claimed subject-matter was opposed, which differs from the present case, as the notice of opposition requested revocation of the patent in suit in its entirety. This argument thus cannot succeed.