T 0803/17 - Appellate review of admissibility of opposition

Key points

•  The Notice of opposition was filed stating the name of the opponent without the legal form (without mentioning Ltd.). A request for correction is filed and allowed by the OD, and the OD takes a separate interlocutory decision that the opposition is admissible (link). The admissibility of the opposition is no further discussed in the final decision rejecting the opposition.
• The interlocutory decision is issued as a "Communication pursuant to Article 113" and is not signed and only stamped "for the opposition division".
• The objection of the proprietor is that there are two companies at the given address, namely Calibre Search Ltd. and Calibre Search (Manchester) Ltd. and that it would be unclear which one was the opponent.
• The interlocutory decision did not allow a separate appeal, such that it can be appealed with the final decision (Article 106(2) EPC).
• This case also illustrates that a document not being labelled as a decision can still be a decision in the sense of Article 106 EPC.
• The OD rejects the opposition. The opponent appeals (against the final decision).
• The respondent disputes the admissibility of the opposition.
• The opponent argues that the respondent can not object to the admissibility of the opposition.
• The Board: "In any case, as the Opposition Division did not allow a separate appeal under Article 106(2) EPC on the decision on the admissibility of the opposition contained in the communication dated 15 April 2016, that decision could only be appealed together with the Opposition Division's final decision. Hence, [...] it follows from this link that the Opposition Division's decision on the admissibility of the opposition and the underlying reasoning is to be treated as an issue which is part of the Opposition Division's final decision."
• The prohibition of information in peius does not apply because it does not apply to the individual grounds for the decision. 
• The Board: "Under the principle of the prohibition of reformatio in peius it is unlawful to worsen the position of the appellant because of its own appeal. The principle of the prohibition of reformatio in peius does, however, not apply separately to each point or issue decided (Case Law of the Boards of Appeal, 10th edition 2022, V.A.3.1.1). The yardstick for determining whether the position of an appellant, because of its own appeal, is worsened in a way which is incompatible with the principle of the prohibition of reformatio in peius is the order of the decision under appeal, in particular the order's legal effect on the appellant (see T 1437/15, Reasons 3.2.2, with reference to G 9/92, Reasons 14 and 16)."
• " If an opposition is considered inadmissible in the appeal proceedings, an appellant whose opposition was rejected in the decision under appeal as unallowable would not be in a worse position than if it had not appealed, as in both cases the patent would be maintained as granted. The legal reasons leading to this result, including whether the opposition is rejected as inadmissible or unallowable, do not fall within the scope of the principle of the prohibition of reformatio in peius (see T 384/08, Reasons 2 and 3, first sentence)."
• "In the present case, the admissibility of the opposition can therefore be considered"
• I note that the Board does not have to decide on the question of whether, if an interlocutory decision holding the opposition admissible and allowing a separate appeal, is not appealed by the patentee, the patentee can bring up the admissibility question in an appeal procedure regarding the final decision. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t170803eu1.html

3. Admissibility of the opposition

3.1 The respondents requested that the opposition be found inadmissible. They essentially argued that the identity of the opponent as indicated in the notice of opposition could not be established without any doubt. As the opposition had been rejected in the decision under appeal, the principle of the prohibition of reformatio in peius was not affected when considering the opposition inadmissible.

3.2 The appellant essentially argued that the respondents were not permitted to raise the inadmissibility of the opposition within the scope of the opponent's appeal. In substance, the identity of the opponent as indicated in the notice of opposition could be established without any doubt.

3.3 The Opposition Division informed the parties by its communication dated 15 April 2016 that it granted the request for correction of the opponent's name in the notice of opposition under Rule 139 EPC and that it considered the opposition admissible. Subsequently, the Opposition Division corrected the name of the appellant and did not allow a separate appeal on this decision under Article 106(2) EPC.

3.4 If one considers the admissibility of the opposition as an indispensable procedural requirement which must be taken into account at all stages of the appeal proceedings (see the parallel case T 882/17, Reasons 3.18.5), this issue falls already for this reason within the scope of the present appeal. In any case, as the Opposition Division did not allow a separate appeal under Article 106(2) EPC on the decision on the admissibility of the opposition contained in the communication dated 15 April 2016, that decision could only be appealed together with the Opposition Division's final decision. Hence, even if one does not consider the admissibility of the opposition as such an indispensable procedural requirement, it follows from this link that the Opposition Division's decision on the admissibility of the opposition and the underlying reasoning is to be treated as an issue which is part of the Opposition Division's final decision.

3.5 Under the principle of the prohibition of reformatio in peius it is unlawful to worsen the position of the appellant because of its own appeal. The principle of the prohibition of reformatio in peius does, however, not apply separately to each point or issue decided (Case Law of the Boards of Appeal, 10th edition 2022, V.A.3.1.1). The yardstick for determining whether the position of an appellant, because of its own appeal, is worsened in a way which is incompatible with the principle of the prohibition of reformatio in peius is the order of the decision under appeal, in particular the order's legal effect on the appellant (see T 1437/15, Reasons 3.2.2, with reference to G 9/92, Reasons 14 and 16). If an opposition is considered inadmissible in the appeal proceedings, an appellant whose opposition was rejected in the decision under appeal as unallowable would not be in a worse position than if it had not appealed, as in both cases the patent would be maintained as granted. The legal reasons leading to this result, including whether the opposition is rejected as inadmissible or unallowable, do not fall within the scope of the principle of the prohibition of reformatio in peius (see T 384/08, Reasons 2 and 3, first sentence).

3.6 In the present case, the admissibility of the opposition can therefore be considered regardless of whether or not this issue is considered as being subject to the principle of the prohibition of reformatio in peius. With regard to the latter, reference is made to the parallel case T 882/17 in which the opponent was also the sole appellant, but in which the decision under appeal was an interlocutory decision of the Opposition Division maintaining the patent in amended form (see T 882/17, Reasons 3).

3.7 In substance, the respondents argued that there had been multiple options and therefore reasonable doubts as to the identity of the opponent which had excluded a correction of the opponent's name under Rule 139 EPC. The Board does not agree.

3.7.1 Firstly, the allegation that "Calibre Search", at the given address, could also refer to a natural person or other legal forms such as a partnership is merely speculative and not supported by any evidence.

3.7.2 Secondly, as stated by the Opposition Division, it is apparent from the opponent's name in the notice of opposition as filed ("Calibre Search") that only the legal form was omitted. Once the name is considered together with the missing legal form, it can only refer to "Calibre Search Ltd." and not, as alleged by the respondents, also to "Calibre Search (Manchester) Ltd.". In the latter case, the name without the legal form would have been "Calibre Search (Manchester)", rather than "Calibre Search".

3.7.3 Thirdly, it is clear that the name "Calibre Search" refers to a single company. There is no indication that this term could refer to a multitude of companies acting as joint opponents, as was alleged by the respondents.

3.7.4 Fourthly, the opponent's representative's submission of 22 October 2015 only reflects that the representative, upon being confronted with the proprietor's observations on the opposition and being unaware that a second company was registered at the same address, verified the facts with his client prior to submitting a request for correction. Hence the statement according to which matters were clarified bears no relevance for assessing whether the identity of the opponent could be established or not.

3.8 The correction of the opponent's name thus introduced what was originally intended. The correction was also filed without delay, which was not disputed by the respondents.

3.9 In conclusion, the Opposition Division's decision to correct the opponent's name under Rule 139 EPC was correct, as well as its decision to consider the opposition admissible. The identity of the opponent could be established on the basis of the information in the notice of opposition.