T 1287/18 - Devolutive effect of appeal

Key points

• The Board gives first a useful summary of the relationship between the principle of party disposition, the extent of appeal, and the devolution effect of appeal. 
• The Board: “In accordance with the principle of party disposition [...] the power of a board to decide a certain matter depends on the extent of the appeal and covers only that part of the impugned decision which is indicated in the statement of grounds as actually challenged by the appeal. The extent of an appeal is simultaneously the limit of the devolutive effect, the latter indicating that the first instance loses its competence for the further prosecution of the matter”
• Now the difficulty is, what do we mean with “that part of the impugned decision which is indicated in the statement of grounds as actually challenged by the appeal”?
• In the following paragraph of the present decision, the Board suggest that a “part” may refer to a part of the reasons. I'm not sure if that is the correct approach. 
• “In the present case, the decision has been appealed [by the opponent] in respect of novelty with regard to the finding of the opposition division that novelty over D1 was given ("extent of the appeal"). The opposition division found that the criteria for selection inventions apply and that the range 5-14 wt% of an ethylene/1-butene elastomer of claim 1 of auxiliary request V met those criteria. This finding has been impugned by the appellant [opponent] on the argument that the criteria for selection invention were not met. Since the Board was of the opinion that the opposition division did not apply the correct criteria for assessing novelty, it was within its power to mention it and to indicate which criteria should be applied.”
•  “Contrary to the appellant's [opponent's] argument, the Board in doing so is not carrying out a general review (de novo) of the first instance decision, regardless of what has been sought by the parties, in contrast to the teaching of G 8/91 (point 10.2 of the reasons). Indeed, considering that the appellant sought the review of the first instance decision to the extent that novelty over D1 was given, the Board has the power to review that part of the decision in full without any limitation. This is also in line with the primary object of the appeal proceedings to review the decision under appeal in a judicial manner (as now explicitly stated in Article 12(2) RPBA 2020), in the sense that they primarily serve to verify the correctness of the result of the decision under appeal, i.e. the legal effect of that decision.”
• G 8/91 is about withdrawal of appeals (finding that the appeal proceedings are immediately terminated if the sole appellant withdraws the appeal) and the cited paragraph 10.2 reads, in part: “As a matter of general principle, it is not the function of the Boards of Appeal to carry out a general review of decisions at first instance, regardless of whether such a review has been sought by the parties. On the contrary, the Boards' function is to consider appeals that are admissible and pending.”
• Returning to the question, what is the “extent of appeal”, it must be borne in mind that parties may not appeal if reasons are unfavourable. E.g. if the patent is revoked as novel but not inventive, the opponent may not appeal (and cross-appeal, i.e. an appeal in reply to an appeal by patentee is not possible); accordingly clearly the patentee can not limit the extent of appeal to the issue of inventive step only. In other words, the patentee appeals the decision to revoke in full. If there is a 2nd ancillary decision in the order of the first instance department (e.g. an apportionment of costs under Art. 104), the appellant can limit the appeal to one of the decisions in the order, see T 420/03. 
• Admittedly, in T 233/93 held that: “As appellant I [opponent] only objected to those parts of the impugned decision which relate to product claims the Board is not authorised to question the patentability of the process claims.”
• Turning to the present case, in my view, the appeal of the opponent is simply directed to the decision as specified in the order, that taking into account the amendments made by the patent proprietor, the patent and the invention to which it relates are found to meet the requirements of the EPC. 
• The Board writes that: “This is also in line with the primary object of the appeal proceedings to review the decision under appeal in a judicial manner (as now explicitly stated in Article 12(2) RPBA 2020), in the sense that they primarily serve to verify the correctness of the result of the decision under appeal, i.e. the legal effect of that decision.”
• As a comment, this touches on the key question: is the purpose of appeal proceedings to verify the correctness of the result of the decision of the appeal, or of the reasons for the decision under appeal? Note, that the first alternative would imply that new attacks in appeal should be considered: if the new attack prejudices the result of the impugned decision, e.g. the patent is maintained as granted, then the Board should consider any attack that can prejudice that result. 

EPO - T 1287/18

Link to the decision after the jump, as well as an extract of the decision text.

https://www.epo.org/law-practice/case-law-appeals/recent/t181287eu1.html

5. Article 54 EPC - Scope of the subject-matter in appeal - Competence of the Board

5.1 As mentioned in section VII above, the Board indicated in its communication sent in preparation of the oral proceedings why it considered that the criteria of "selection invention" used by the opposition division in the decision under appeal to assess novelty over D1 of claim 1 of auxiliary request V were not the ones to be applied in the present case and further indicated its preliminary view regarding which criteria should be applied in the present case.

5.1.1 The appellant held that the Board's considerations went beyond the subject of the present appeal case (letter of 9 July 2021: section 6 and further arguments provided at the oral proceedings). Since the lack of novelty of the feature combination of claim 1 had not been contested, it was not under appeal and consequently also nothing the Board would be entitled to decide upon anew. In this respect the appellant referred to the devolutive effect of an appeal, whereby reference was made to decisions G 2/08 (OJ EPO 2010, 456) and G 3/08 (OJ EPO 2011, 10), as well as to the principle of party disposition with reference to decision G 8/91 (OJ EPO 1993, 346: reasons 10.2).

5.1.2 However, the Board considers itself entitled to decide on the question of novelty of the present claim 1 over document D1 as a whole and not only on part of that question.

In accordance with the principle of party disposition, as referred to by the appellant, the power of a board to decide a certain matter depends on the extent of the appeal and covers only that part of the impugned decision which is indicated in the statement of grounds as actually challenged by the appeal. The extent of an appeal is simultaneously the limit of the devolutive effect, the latter indicating that the first instance loses its competence for the further prosecution of the matter (see also Case Law, supra, V.A.1.4).

In the present case, the decision has been appealed in respect of novelty with regard to the finding of the opposition division that novelty over D1 was given ("extent of the appeal"). The opposition division found that the criteria for selection inventions apply and that the range 5-14 wt% of an ethylene/1-butene elastomer of claim 1 of auxiliary request V met those criteria. This finding has been impugned by the appellant on the argument that the criteria for selection invention were not met. Since the Board was of the opinion that the opposition division did not apply the correct criteria for assessing novelty, it was within its power to mention it and to indicate which criteria should be applied. Contrary to the appellant's argument, the Board in doing so is not carrying out a general review (de novo) of the first instance decision, regardless of what has been sought by the parties, in contrast to the teaching of G 8/91 (point 10.2 of the reasons). Indeed, considering that the appellant sought the review of the first instance decision to the extent that novelty over D1 was given, the Board has the power to review that part of the decision in full without any limitation. This is also in line with the primary object of the appeal proceedings to review the decision under appeal in a judicial manner (as now explicitly stated in Article 12(2) RPBA 2020), in the sense that they primarily serve to verify the correctness of the result of the decision under appeal, i.e. the legal effect of that decision.

5.1.3 For these reasons, the appellant's objection is rejected.