T 1789/22 - Two opponents, one appeals, attacks submitted by the other

Key points

• Decision of 12.12.2024, written decision issued on 19.12.2025 (Board 3.3.04, no communication under Art. 15(9) RPBA visible in the online file).
• There were two opponents. Opponent 1 appeals. Opponent 2 and the proprietor do not appeal. Opponent 1 maintains only some of the attacks in their Statement of grounds. Opponent 2 is a party as of right and uses its 'reply' to the appeal to submit additional attacks.
• "The submissions of the party as of right-opponent 2 included objections under lack of novelty in view of document D27 and lack of inventive step where documents D6 and D31 were taken to represent the closest prior art. Since the opposition division took a decision on these lines of attack in favour of the respondent, an appeal should have been filed to have these findings reviewed [*], rather than merely contesting them in the reply to the statement of grounds of appeal. However, as indicated above, the appeal of the appellant did not contest the decision in these respects, therefore these objections are outside the legal and factual framework for review by the board. Their consideration is in principle not excluded but is subject to the discretion accorded to the board under Article 114(2) EPC and Articles 12 and 13 RPBA."
• The Board's exercise of its discretion is intertwined with its decision on the subsequent letter of the appellant (opponent 1) that it agreed with the attacks (objections) of opponent 2.
• " The board notes that the appellant provided no justification for not having raised these objections with the statement of grounds of appeal, and the board cannot see any either. Moreover admitting these several additional attacks would be detrimental to procedural economy and unfair for the respondent, who relied on these parts of the appealed decision not having being contested. Accordingly, the objections filed by the appellant with this letter were not admitted into the appeal proceedings. The same applies to the corresponding objections filed by the part as of right."
• * - Note that this point is a bit tricky. Had the OD revoked the patent as novel over D1 but not inventive over D2, the opponent could not have appealed on the ground of the unfavorable reasoning on novelty (the requirement of being adversely affected of Art. 107 is determined by reference to the order of the decision, not the reasons). 
• By the same token, had the proprietor appealed as well, opponent 2 as a respondent could have submitted the attacks validly in their reply to the appeal.
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• Furthermore, opponent 1 had attacked only some of the independent claims of the set of claims held allowable by the OD in its statement of grounds, but did not attack independent claim 5 in its statement of grounds.  
• The Board holds a later-filed attack against claim 5 to be inadmissible: " As set out above, the statement of grounds of appeal defines the framework of the appeal and in the present case it did not include novelty of claim 5 of the request held allowable by the opposition division (see points 2., 5. and 5.1). Accordingly, novelty of claim 1 of the main request is not open for review by the board in this appeal proceedings."
• The Board first recalled the principle of the 'extent of the opposition'. The Board then reasoned that: "2. With regard to opposition appeal proceedings, in addition the statement of grounds of appeal determines the object of the appeal proceedings and the legal and factual framework for the review of the appealed decision by the board. In other words, the statement of grounds of appeal determines the extent to which amendment or cancellation of the appealed decision is requested (see e.g. G 9/92, Reasons 1)."
• G 9/92 r.1: "...  Proceedings under the EPC in respect of European patent applications and patents are, with some exceptions, initiated by a party. The initial "request" determines the extent of the proceedings. This is known as the principle of party disposition (ne ultra petita). The present case concerns the question whether the extent of the initial appeal, i.e. the statement in the notice of appeal, affects the extent of the subsequent proceedings, and this has to be examined systematically in conjunction with procedural law under the EPC." (emphasis added)
• G 9/92 is about reformatio in peius, i.e. the subject-matter of the patent (as amended), i.e. the order of the decision and not the reasons for the decision (there is quite some case law on this point). Opponent's 1 request in its notice of appeal was to revoke the patent in its entirety (link).  The TBA acknowledges that G 9/92 does not directly support its reasoning by citing it as 'see ... G 9/92').
• The Board's reasoning seems new to me.
• I also wonder how to reconcile it with the case law that there is no concept of partial inadmissibility of an appeal in the EPC.  
• The Board's headnote 1 is as follows: "1. ... The provisions of Article 107, second sentence, EPC guarantee a non-appealing party the right to participate to pending appeal proceedings. However, they do not provide it an autonomous right to have requests which go beyond the scope of the appeal as defined by the appellant's statement of grounds of appeal, decided by the board (as a direct consequence of G 2/91, Headnote)."
• This headnote puts it too strongly, in my view.
• The case is about a non-appealing opponent, not about a proprietor submitting claim requests. Furthermore, G2/91 is about the termination of the appeal if the appellant withdraws his appeal (heandnote 1) and the refund of the appeal fee (headnote 2).
• I think the 'reply' of the non-appealing second opponent should be treated as a case amendment under Article 13(1) RPBA, similar to the case where a respondent/appellant uses his reply under Art.12(1)(c) to the appeal of the other appellant as a supplement to his own statement of grounds (treated as an appeal case amendment under Art. 13(1), see T 2701/19).
• See also T 250/20 about cross-party reliance, referring to "established case law according to which, for example, an opponent may rely on a ground of opposition invoked by other opponents either during the opposition proceedings or during any subsequent appeal proceedings". This suggests that Opponent 2 can rely on the Statement of grounds of Opponent 1 and then submit any further attacks as case amendments under Art. 13(1).
• "By not filing an appeal, a non-appealing party has not contested the findings of the opposition division, beyond the framework of the appeal filed by the appellant."
• This does not seem correct, to the extent that it suggests the opponent as a respondent cannot introduce objections against the broader claims (sought by the proprietor as appellant) that were not decided on in the impugned decision. 

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t221789eu1