T 0198/15 - Opponent's appeal inadmissible

Key points

• The appeal of opponent is rejected as inadmissible.
• The opponents Statement of grounds consists essentially of 1) Word for word repetitions of the notice of opposition, and of the opponent's written submissions before the OD, and 2) new novelty attacks based on documents D6 and D9, which did not form part of the proceedings before the opposition division.

• " It may well be that the appellant [opponent] does not agree with the decision. However, a mere re-run of the opposition before the Board which does not include the reasons for setting aside the impugned decision (Rule 99(2) EPC) - albeit with the additional issue of the admission of new documents - is not compatible with the main purpose of the opposition appeal proceedings, which is to give the losing party a possibility to challenge the decision of the opposition division on its merits (G 9/91, OJ 1993, 408, Reasons 18). Therefore, the appeal is inadmissible." 
• It seems unfair to me that a patentee can base the appeal solely on amended claims (and does not need to defend the claims as rejected by the OD at all), see T 1668/14, in order to have an admissible appeal, while the opponent must defend its attacks rejected by the OD. In T 1168/14, it was stated that "it is not an absolute requirement for admissibility that the appellant should attack the opposition division's decision as flawed." It seems that this applies only for patentees as appellants, or at least not for opponents in view of this decision T 198/15. 

EPO T 0198/15 -  link

Reasons for the Decision

2. Admissibility of the appeal

2.1 In the present case, the admissibility of the appeal depends on whether the statement of grounds of appeal complies with Article 108, third sentence, EPC in conjunction with Rule 99(2) EPC. According to these provisions, in the statement setting out the grounds of appeal the appellant shall indicate "the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based."

2.2 The statement setting out the grounds of appeal must enable the Board to understand immediately why the decision under appeal is alleged to be incorrect and on which facts the appellant bases their arguments, without having to make investigations of its own (see J 10/11, Reasons 2.1 with reference to several decisions).

2.3 In the decision under appeal the opposition division addressed the arguments presented by the opponent in support of their grounds for opposition under Articles 100(a) and 100(b) EPC and concluded that the patent as granted met the requirements of Articles 83, 54 (novelty in view of D1 and D2) and 56 (starting from D3 or D1) EPC. It has not been argued by the appellant, nor can the Board see any reason to support the argument, that the decision under appeal was lacking in reasoning to the effect that the appellant was unable to identify why and to what extent it disagreed with it.

2.4 The statement setting out the grounds of appeal consists essentially of the following:

- Word for word repetitions of the notice of opposition, supplemented by
- Word for word repetitions of the appellant's written submissions dated 1 September 2014 (prior to the oral proceedings before the opposition division); and
- New novelty attacks based on documents D6 and D9, which did not form part of the proceedings before the opposition division.

2.5 The arguments which are mere repetitions of the ones presented before the opposition division, do not, and cannot, give reasons why the decision under appeal is to be set aside because they were drafted before the decision of the opposition division was issued.

2.6 The passage in the statement setting out the grounds of appeal in section 4.1.1 (page 7, 3**(rd) paragraph), which starts "[o]n a more general level", may well attempt to introduce a higher level of generalisation into the discussion. It does, however, refer to the discussion of novelty with respect to document D6, which had not been filed during the opposition proceedings. Moreover, it does not set out at all how it relates to the decision under appeal and the Board cannot immediately understand how it does so either. This passage does not therefore contribute to the admissibility of the appeal.

2.7 The objections based on D6 and D9, are an entirely fresh case made on appeal. Leaving aside the issue of whether or not such new documents should be admitted, there is again no link to the decision under appeal. These passages do not therefore contribute to the admissibility of the appeal either.

2.8 Hence, there is no analysis in the statement of grounds of appeal of why the impugned decision is incorrect.

2.9 It may well be that the appellant does not agree with the decision. However, a mere re-run of the opposition before the Board which does not include the reasons for setting aside the impugned decision (Rule 99(2) EPC) - albeit with the additional issue of the admission of new documents - is not compatible with the main purpose of the opposition appeal proceedings, which is to give the losing party a possibility to challenge the decision of the opposition division on its merits (G 9/91, OJ 1993, 408, Reasons 18). Therefore, the appeal is inadmissible.

Order

For these reasons it is decided that:

1. The appeal is rejected as inadmissible.