T 0235/20 - No objections, no appeal

Key points

•  The OD decided to maintain the patent in amended form. The opponent appeals . The question is whether the opponent was adversely affected by the decision.
• "According to the decision under appeal "[t]here were no objections from the opponent against the claims of Auxiliary Requests [sic] VI"
• Furthermore, also according to the minutes of the oral proceedings before the opposition division, the opponent / appellant II "did not have any objections to said request [auxiliary request VI]"
• "appellant II [opponent] has not, in its statement of grounds of appeal or at any stage thereafter, taken issue with the fact that, in the decision under appeal, the opposition division had not given any reasons as to why auxiliary request VI complied with the requirements of the EPC. To the contrary, during the oral proceedings before the board, appellant II confirmed that the minutes of the oral proceedings before the opposition division correctly reflected its statements made during the oral proceedings. "For the reasons which follow, appellant II's submission that it was nevertheless adversely affected by the opposition division's decision because it had requested that the patent be revoked in toto in the opposition proceedings is not found to be persuasive.
• "It is apparent from the decision under appeal (see section I.2) and the minutes of oral proceedings (see point 1.b) that revoking the patent in toto represented appellant II's initial request made both in the notice of opposition and at the beginning of the oral proceedings. Appellant II's subsequent statement that it had "no objections" to the then auxiliary request VI made in the course of the oral proceedings before the opposition division can therefore only be understood to mean that it agreed to the patent being maintained in amended form on the basis of auxiliary request VI, implying that the initial request for the patent to be revoked in toto had been withdrawn and that appellant II's final position was that the patent should be upheld neither as granted nor in any version broader in scope than auxiliary request VI."
• "In the board's view, appellant II therefore cannot be considered to be adversely affected within the meaning of Article 107 EPC by the opposition division's decision according to which the patent could be maintained in amended form according to auxiliary request VI, in respect of which appellant II had declared that it had no objections at the end of the opposition proceedings."

EPO 

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

https://new.epo.org/en/boards-of-appeal/decisions/t200235eu1.html

Admissibility of appellant II's appeal

33. Pursuant to Article 107, first sentence, EPC any party to proceedings adversely affected by a decision may appeal.

34. At issue in the case at hand was whether appellant II was adversely affected by the opposition division's decision, according to which the patent as amended in the form of auxiliary request VI (which is auxiliary request II in the appeal) complied with the requirements of the EPC.

35. According to the decision under appeal "[t]here were no objections from the opponent against the claims of Auxiliary Requests [sic] VI" (see decision under appeal, point 15.2) and the opposition division "also considers the claims of Auxiliary Requests [sic] VI to meet the requirements of the EPC" (ibid.; see

point 15.3).

36. Furthermore, also according to the minutes of the oral proceedings before the opposition division,

appellant II "did not have any objections to said request [auxiliary request VI]" (see minutes,

point 22.).

37. Appellant II has not submitted a request for correction of the minutes of the oral proceedings or submitted at any point that the minutes did not correctly reflect the relevant statements made during the oral proceedings (Rule 124(1) EPC), and in addition appellant II has not, in its statement of grounds of appeal or at any stage thereafter, taken issue with the fact that, in the decision under appeal, the opposition division had not given any reasons as to why auxiliary request VI complied with the requirements of the EPC. To the contrary, during the oral proceedings before the board, appellant II confirmed that the minutes of the oral proceedings before the opposition division correctly reflected its statements made during the oral proceedings.

38. For the reasons which follow, appellant II's submission that it was nevertheless adversely affected by the opposition division's decision because it had requested that the patent be revoked in toto in the opposition proceedings is not found to be persuasive.

39. It is apparent from the decision under appeal (see section I.2) and the minutes of oral proceedings (see point 1.b) that revoking the patent in toto represented appellant II's initial request made both in the notice of opposition and at the beginning of the oral proceedings. Appellant II's subsequent statement that it had "no objections" to the then auxiliary request VI made in the course of the oral proceedings before the opposition division can therefore only be understood to mean that it agreed to the patent being maintained in amended form on the basis of auxiliary request VI, implying that the initial request for the patent to be revoked in toto had been withdrawn and that appellant II's final position was that the patent should be upheld neither as granted nor in any version broader in scope than auxiliary request VI.

40. The fact that the opposition division did not establish the final requests of the parties at the end of the oral proceedings has no bearing on this conclusion. As acknowledged by appellant II, the final requests are usually not established at the end of the oral proceedings before the opposition division, and appellant II was aware of this. It would therefore have been up to appellant II to state any objections it had against auxiliary request VI when it was given the opportunity to do so by the opposition division.

41. In the board's view, appellant II therefore cannot be considered to be adversely affected within the meaning of Article 107 EPC by the opposition division's decision according to which the patent could be maintained in amended form according to auxiliary request VI, in respect of which appellant II had declared that it had no objections at the end of the opposition proceedings.

42. The board therefore held appellant II's appeal to be inadmissible.