T 1724/16 - Article 133(2) and respondent

 Key points

• PCT application filed in 2000, Notice of opposition in 2013, so again the opposition appeal lasted after the expiry of the patent term, but that is not the focus of the present post.
• The OD rejected the opposition, the opponent appeals, the patentee does not respond. 
• “The proprietor did not reply to the statement of grounds of appeal. In a letter dated 17 August 2020 the proprietor's representative stated the following: "We hereby resign representation of this patent". In a communication dated 16 October 2020, duly notified to the proprietor and to the opponent's representative, the Board pointed out that the representation requirements of Article 133(2) EPC were no longer met in respect of the proprietor in the current appeal proceedings, and that until this deficiency was remedied, the proprietor could not take any valid procedural steps. The proprietor did not reply to this communication or to the Board's communication under Article 15(1) RPBA 2020.”
• The appeal is dismissed, i.e. the Board finds that claim 1 is inventive even without any comments or defence from patentee in appeal.
• This shows that lack of compliance of Article 133(2) EPC for the patentee as respondent does not affect the processing of the appeal as such, in particular, is not a ground for allowing the appeal or even revoking the patent.

T 1724/16 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t161724eu1.html

IX. The proprietor did not reply to the statement of grounds of appeal. In a letter dated 17 August 2020 the proprietor's representative stated the following: "We hereby resign representation of this patent". In a communication dated 16 October 2020, duly notified to the proprietor and to the opponent's representative, the Board pointed out that the representation requirements of Article 133(2) EPC were no longer met in respect of the proprietor in the current appeal proceedings, and that until this deficiency was remedied, the proprietor could not take any valid procedural steps. The proprietor did not reply to this communication or to the Board's communication under Article 15(1) RPBA 2020.

T 2349/17 - Article 133(2) and party as of right

 Key points

• The opponent appeals. Opponent 2 (party to the proceedings as of right), did not make any submissions or filed any requests during the appeal proceedings.
• “[The] Board indicated to the parties that it had been informed by the former representatives of opponent 2 that they were no longer mandated in this matter and pointed to the stipulations of Article 133 (2) and (3) EPC regarding the representation of parties. No reaction from opponent 2 to that communication took place.” No one appeared for Opponent 2 at the oral proceedings.
• The Board finds claim 1 to be not inventive and revokes the patent.
• This case illustrates that there is no particular deficiency if a party as of right is no longer represented in the course of the appeal proceedings thereby no longer meeting the requirements of Article 133(2) EPC.
• Incidentally,  PCT application filed in 2002, Notice of opposition filed in 2009, this is the second appeal after remittal.

T 2349/17 -  

https://www.epo.org/law-practice/case-law-appeals/recent/t172349eu1.html

XI. With letter of 29 April 2021, the Board indicated to the parties that it had been informed by the former representatives of opponent 2 that they were no longer mandated in this matter and pointed to the stipulations of Article 133 (2) and (3) EPC regarding the representation of parties. No reaction from opponent 2 to that communication took place.

XII. Oral proceedings were held in Munich on 6 July 2021 in the presence of the appellant and the respondent. Although duly summoned, no one appeared for the party as of right. At the beginning of the oral proceedings the respondent withdrew its objection that the appeal be deemed not to have been filed.

T 0682/16 - Non-human genetically engineered organisms

Key points

• This is a kind of Oncomouse case (opposition appeal T315/03) with a claim directed to non-human organisms comprising a host cell comprising a genetic construct. The Board applies Art. 53(a) and Rule 28(d) in great detail in the preliminary opinion (here) but that opinion does not become case law, alas, since patentee restricts to AR-2 cancelling the claims to the organism. 
• The genetic construct is a gene expression system that can be used to express a gene of interest in the cell. This is similar to T 0606/03. 
• The Board finds a likelihood of animal suffering is established because the claim is so broad so as to encompass cases wherein the genetically engineered animal suffers.
• On the other hand, a medical benefit is not credible because of the breadth of the claim.
• The Board applies the 'correspondence principle'.
• The Board also refers to the 'real test' of T 19/90 (Oncomouse examination appeal).
• The Board comments on the case where, for the purpose of Art.53(a), a claim covers both allowable and non-allowable embodiments.
• Claim 45 directed to the isolated host cell was not opposed.

• Over to the procedural stuff. The decision states that " Several oppositions were filed" and that " An appeal was lodged by one of the opponents (appellant).". The OD found that only a single opposition fee was paid and that there was a joint opposition filed by nine legal persons. I'm not aware that it would be established case law that an individual member of the 'group of joint opponents' may appeal individually. However, the Board does not comment on this in any detail.

• A question for trainees. In the present case, the letters for the joint opponents in the first instance proceedings were signed (only) by a Mr. Then. Mr. Then is neither a professional representative nor a lawyer. Explain why this is not a problem and explain the facts you have to assume for reaching this conclusion. What kind of evidence could the opposition division request from Mr. Then to show his entitlement to act in the proceedings? (normally, the question works out the same in appeal, but see the particularity above, so I limit the question to the first instance proceedings).
• Mr. Then showed up alone at the oral proceedings before the opposition division (besides the professional representative for the patentee) and wishes to present opponents' case. Would this be a problem?

EPO T 0682/16 -  link

Reasons for the Decision

Admissibility of the joint opposition and of the appeal

1. In reply to the statement of grounds of appeal, the respondent contested the decision of the opposition division on the admissibility of the joint opposition and requested the board to dismiss both, the opposition and the appeal, as inadmissible.

2. In its communication pursuant to Article 15(1) RPBA 2007, the board drew the parties' attention to the opposition division's summary in both, its summons to attend oral proceedings and the decision under appeal, of the facts and submissions on the basis of which the respondent argued against the admissibility of the joint opposition (cf. pages 2 to 4 of the Summons to attend oral proceedings; pages 3 to 6 of the decision under appeal). The board further noted that these facts and submissions were not contested in appeal and, indeed, were identical to those put forward by the respondent in appeal proceedings.

3. After consideration of the facts and submissions as well as of the respondent's arguments and the evidence on file, the board informed the parties that it saw no reason to deviate from the findings of the opposition division as regards this issue, namely that "Testbiotech e. V., represented by Mr. Then [as executive director of Testbiotech e.V.], continues to be regarded as opponent and common representative of the joint opposition" (cf. bottom of page 6 in the Summons to attend oral proceedings, and pages 6 to 8 of the decision under appeal).

4. Since the parties have not contested the board's provisional opinion on this issue, the board thus considers the joint opposition and the appeal to be admissible.

Admission of the main request into the appeal proceedings

5. The main request was filed (as auxiliary request 2) in response to the communication pursuant to Article 15(1) RPBA 2007, wherein the parties were informed of the board's provisional opinion on the issues of the appeal. The main request is thus an amendment of the respondent's case and may be admitted into the proceedings only at the discretion of the board (Article 13(1) RPBA 2020).

6. The appellant has not provided any reasons against the admission of this request into the appeal proceedings.

7. By deleting claims 48 to 53, the respondent addressed all issues raised by the appellant and by the board in its communication. The main request does not give rise to new objections and contributes to the efficiency of the procedure.

8. Therefore, the board, in the exercise of its discretion (Article 13(1) RPBA 2020), admits the main request into the appeal proceedings.

Main request

9. In the present case, the opposition was only directed against claims 48 to 53 to the extent that they related to "a non-human organism" comprising a host cell of claim 45.

10. The main request no longer contains claims directed to "a non-human organism". Thus, it overcomes all grounds of opposition. This has also been acknowledged by the appellant.

11. Therefore, the patent can be maintained on the basis of the main request and a description to be adapted thereto (Article 111(2) EPC).

Order

For these reasons it is decided that:

1. The joint opposition and the appeal are admissible.

2. The decision under appeal is set aside.

3. The case is remitted to the opposition division with the order to maintain the patent on the basis of claims 1 to 51 according to the main request filed on 8 April 2020 and a description to be adapted thereto.

T 0427/15 - The CEO wishes to speak

Key points

• In this case, the opponent is a French company. The CEO of the opponent wishes to speak. The Board allows this. 
• " The board is not aware of any case law which would limit a person's right to make submissions by reason only of the appointment of a professional representative, where that person is otherwise fully authorized to represent a party itself, and is therefore in fact inherently permitted to submit submissions of its own right." 
• This decision is in line with T2036/12. 

EPO T 0427/15 - link

Motifs de la décision

1. Le recours est recevable.

2. La question de savoir si M. Lorenz peut présenter ses observations pendant la procédure orale

2.1 L'opposante (« Mimotec S.A. ») a deposé un pouvoir daté du 28 mars 2019 autorisant M. Cyrille Poindron à agir pour la société. Le pouvoir était signé par « H. Lorenz, CEO » et une autre personne. L'abréviation « CEO » signifie en anglais "Chief Executive Officer", c'est-à-dire Directeur Général de la société. Pendant la procédure orale M. Lorenz a déclaré qu'il était encore « CEO » de Mimotec S.A., et la titulaire n'a fourni aucun élément de preuve que ce n'était pas le cas. La chambre considère donc que M. Lorenz est directeur de Mimotec S.A. (l'opposante).

2.2 La chambre n'a connaissance d'aucune jurisprudence qui limiterait le droit d'une personne à présenter des soumissions du seul fait de la nomination d'un mandataire agréé, lorsque cette personne est par ailleurs pleinement autorisée à représenter une partie elle-même, et est donc de fait autorisée de manière inhérente, à présenter elle-même des soumissions de son plein droit.

Par conséquent, M. Lorenz a le droit de s'exprimer pendant la procédure orale dans l'exercice de ses fonctions en tant que directeur, même si l'opposante a désigné un mandataire agréé en application de l'article 134(1) CBE.

T 0578/14 - Communicating with party outside EPC

Key points

• In this examination appeal, the applicant was (at the time of filing the appeal) the inventor, i.e. a natural person from New Zealand. The applicant himself contacted the EPO to request an extension of time for filing the Statement of grounds, even though at that time a professional representatieve was appointed (but the applicant was unhappy with the representative). The EPO formalities officer explained that this was not possible. No Statement of grounds was filed in time.
• The decision is in substance that the Board refuses the request for re-establishment for filing the Statement of grounds. The applicant was not objectively unable to file meet the time limit for filing the Statement of grounds, the request for RE was filed late, and in any case due care had not been shown.
• In this case, the formalities officer had sent a letter directly to the applicant. This is allowable, according to the Board. "The board notes that there is nothing in the EPC which prevents the EPO, without such consent, from communicating with or notifying communications to parties not resident in an EPC contracting state. In particular, Article 133(2) EPC does not prevent the EPO from doing that.  []It goes without saying that, if a representative is appointed, the EPO has to keep him informed, e.g. by sending him a copy, as it did in the present case, of any communications it sends direct to the party." 
• Regarding whether the applicant was unable to file the Statement of grounds (due to his conflict with his then representative): " A party, however, cannot deliberately choose not to fulfil the conditions for a valid appeal, and then achieve an appellate review through the back door of a request for re-establishment of rights (see also decision T 413/91, point 4 of the Reasons). Thus, the board concludes that the "untenable" situation with the representative did not objectively prevent Mr [applicant] from instructing his former or a new representative to file a statement of grounds of appeal within the four-month period under Article 108 EPC. " 

EPO T 0578/14 -  link

3.5 The appellant challenges the point in time at which the authorisation of the representative terminated.

According to Rule 152(8) EPC, a representative is deemed to be authorised until the termination of his authorisation has been communicated to the EPO. This legal fiction means that, if or for as long as the termination of an authorisation is not communicated to the EPO, the authorisation remains effective vis-à-vis the EPO even though, for example, as between the party and its representative, the contract which they entered into has been dissolved or the party has - vis-à-vis the representative - revoked the authorisation that it gave him. For the sake of completeness, it is also pointed out that, in the case of a change of representative involving professional representatives, the provisions of Article 1(2) of the decision of the President also apply, i.e. usually either the termination of the authorisation of the previous representative is communicated to the EPO or the new representative files an individual authorisation (original and one copy) or a reference to a general authorisation already on file. It follows that, contrary to what the appellant submitted, it is not the EPO which dissolves a contract between a party to the proceedings before the EPO and its representative. The appellant is therefore correct in saying that a party has the right to terminate the contract with its representative and that the termination of such contract is governed by the national law applicable and not by the EPC. Of course, the same must apply if the representative wishes to terminate his contract with his client. However, in view of Rule 152(8) EPC and the decision of the President, the responsibility for informing the EPO about the termination of the contract between a party and its representative before the EPO lies with the represented party, irrespective of whether or not it has its residence in an EPC contracting state, or with its representative. It is only when the EPO receives such information that, depending on the content of the information, it might have to determine on the basis of the documents filed whether a contract between a party to the proceedings before the EPO and its representative has indeed been terminated. The board emphasises that, just like the appointment of a representative vis-à-vis the EPO and the filing of an authorisation as prescribed by Rule 152(1) EPC and the decision of the President, the communication about the termination of an authorisation of a representative vis-à-vis the EPO is of fundamental importance for establishing whether the EPO is dealing with the entitled representative.