T 0025/15 - Admissible appeal even if earlier no objections

Key points

• " The [proprietor] contests admissibility of the opponent's appeal, arguing that in first instance no objection was presented against the request on which the patent was maintained in amended form. Thus the opponent has not been adversely effected by the impugned decision. " 
• " in the present case the notice of opposition leaves no doubt that the whole of the patent, including the subject matter of the appellant-proprietor's second auxiliary request, was opposed in the statement under Rule 76(1) (c) EPC [], rather than the patent being opposed only to a certain extent (cf. G 9/91, reasons, point 8). By maintaining the patent in amended form the division did not accede to this request resulting in adverse effect for the appellant-opponent.
• " In this regard, in accordance with established jurisprudence of the Boards of Appeal, a party's silence regarding a request is not to be construed as giving consent to maintenance of the patent according to that request" 
• " The Board concludes that the appellant-opponent was adversely affected by the impugned decision within the meaning of Article 107 EPC and in view of the above considerations, their appeal is admissible." 
• This decision can be compared with T 735/13. 

EPO T 0025/15 - link


Reasons for the Decision

1. Admissibility

1.1 Admissibility of the appellant-proprietor's appeal has not been contested, nor indeed is there any formal deficiency apparent that might warrant the rejection of the appeal as inadmissible under Rule 101 EPC. Therefore the appellant-proprietor's appeal is admissible.

1.2 The appellant-proprietor contests admissibility of the opponent's appeal, arguing that in first instance no objection was presented against the request on which the patent was maintained in amended form. Thus the opponent has not been adversely effected by the impugned decision. Moreover, so the argument goes, the arguments now presented in the appellant-opponent's appeal are outside the legal and factual framework of the opposition.

1.2.1 The impugned decision is appealable, Article 106 EPC, and the appellant-opponent filed a notice of appeal and reasoned grounds of appeal within the prescribed time limits, meeting the formal requirements of Article 108 and Rule 99 EPC.

1.2.2 The Board observes that the notice of opposition (form 2300E, page 2, point 5) states that opposition was against the patent in its entirety. Consistent with this, in the opposition notice itself, the appellant-opponent argued that all claims dependent on claim 1, thus inter alia the subject matter of claim 1 as maintained - granted claims 2 to 4 and 14 - fail because claim 1 fails ("Nachdem der Anspruch 1 offensichtlich den Anforderungen des europäischen Patentübereinkommens nicht entspricht, fallen auch die abhängigen Ansprüche 2 bis 44 dahin"). Thus in the present case the notice of opposition leaves no doubt that the whole of the patent, including the subject matter of the appellant-proprietor's second auxiliary request, was opposed in the statement under Rule 76(1) (c) EPC (formerly Rule 55(c), EPC 1973), rather than the patent being opposed only to a certain extent (cf. G 9/91, reasons, point 8). By maintaining the patent in amended form the division did not accede to this request resulting in adverse effect for the appellant-opponent.

1.2.3 In this regard, in accordance with established jurisprudence of the Boards of Appeal, a party's silence regarding a request is not to be construed as giving consent to maintenance of the patent according to that request (see CLBA IV.E. 2.4.2 d and the cited decisions, in particular G 1/88).

Therefore, the fact that the then opponent withdrew their request for oral proceedings before the opposition division (see letter of 3 October 2014) and did not attend the oral proceedings cannot be construed as withdrawal of their request for revocation of the patent in its entirety, which indeed they reiterated in the above letter (cf. T 266/92, grounds, point 1).

The Board concludes that the appellant-opponent was adversely affected by the impugned decision within the meaning of Article 107 EPC and in view of the above considerations, their appeal is admissible.

1.2.4 Furthermore, the appellant-opponent's case is not a "fresh case", that is one unconnected with the reasons given in the impugned decision. Both novelty and inventive step were raised in the opposition notice, and largely the same documents cited. The Opposition Division (see decision grounds pages 8 to 10) considered these issues in reaching their decision on the fifth auxiliary request in opposition proceedings (now second auxiliary request). The arguments presented in the appellant-opponent's statement of grounds address the reasoning of the decision. They do so in such a manner that the Board is able to understand the case being made by the appellant-opponent against the decision.

Therefore, in the Board's opinion, the appellant-opponent's appeal is within the same legal and factual framework as the Opposition Proceedings.