T 1679/17 - No partial inadmissibility, and checking the minutes

 Key points

• The respondent/ patentee argues that the appeal of the opponent is partially inadmissible so far as inventive step is concerned. The Board explains that the EPC does not have the concept of partial inadmissibility of appeals and provides a summary of some established case law.
• The Board, in German: “Zum einen kennt das EPÜ und die dazu ergangene Rechtsprechung das Konzept einer teilweisen Unzulässigkeit nicht. Sofern ein Einwand gegen die angefochtene Entscheidung in einer der Regel 99(2) EPÜ entsprechenden Weise vorgetragen wurde, ist die gesamte Beschwerde zulässig. Andere Einwände mögen dann vielleicht nicht ausreichend substantiiert im Sinne von Artikel 12(2) VOBK 2020 sein, dies führt aber nicht zu einer Teilunzulässigkeit, die sich durch späteren Vortrag ja nicht mehr beheben ließe, sondern nur dazu, dass diese Einwände, sofern sie erst später substantiiert werden, unter dem Zulassungsvorbehalt der zum Zeitpunkt ihrer verspäteten Substantiierung anwendbaren Ermessensvorschrift (Artikel 13(1) oder 13(2) VOBK) stehen. Zum anderen wäre gemäß ständiger Rechtsprechung der Beschwerdekammern eine Beschwerde nicht allein deshalb als unzulässig zu betrachten, weil sie sich auf Beweise stützt, die erstmals mit der Beschwerdebegründung vorgelegt wurden.”
• Note that in case you wish to contest the decision of the OD to not admit prior art documents, you must both show the serious error in that decision and that the claims are not patentable taking into account those documents. “Die Beschwerde befasst sich gerade mit dieser Nichtzulassungsentscheidung und versucht zum einen darzulegen, warum die Einspruchsabteilung hier fehlerhaft entschieden hat und warum zum anderen die Erfindung, hätte man die nicht zugelassenen Dokumente berücksichtigt, nahe gelegen hätte. ”
• The Board, in response to a craetive argument of the patentee regarding admissibility: “Die Ansicht der [patentee/respondent], man dürfe zur Patentfähigkeit nicht mit Dokumenten argumentieren [in appeal], die die Einspruchsabteilung nicht zugelassen hat, würde im Ergebnis dazu führen, dass Nichtzulassungsentscheidungen nicht effektiv mit der Beschwerde angefochten werden könnten, was zu ersichtlichen Rechtsschutzlücken führen würde.”
  
  
• The Board, about the obligation to carefully review the minutes of the first instance oral proceedings directly after receipt: “Die Kammer weist darauf hin, dass nach ständiger Rechtsprechung der Beschwerdekammern von den Parteien und deren Vertretern zu erwarten ist, dass der Inhalt einer Niederschrift, insbesondere dessen Vollständigkeit und Korrektheit, direkt nach dem Erhalt sorgfältig geprüft wird und ggf. zeitnah bemängelt wird, weil er die einzige Möglichkeit darstellt, nachzuvollziehen, was sich während der mündlichen Verhandlung vor der ersten Instanz tatsächlich ereignet hat”
• The opponent disputes that it had withdrawn the attacks based on Art. 83 and Art. 123(2) in the first instance oral proceedings. 

EPO T 1679/17 

https://www.epo.org/law-practice/case-law-appeals/recent/t171679du1.html

(decision text omitted)

T 1750/16 - Admissibility appeal

Key points

• In this opposition appeal, the patentee as appellant files a new main request and auxiliary request with the Statement of grounds. The appeal is admissible because the patentee discussed in the Statement of grounds why the new requests overcome the objections of the OD.
• However, the requests are not admitted because they should have been filed during the first instance proceedings. The patentee made the choice to not file requests responsive to the Article 84 and 123(2) objections of the opponents and the preliminary opinion of the opposition division. The  Board notes that the preliminary opinion was issued 8 months before the oral proceedings. Therefore, the requests can not be filed only in appeal. The new claims also constitute a fresh case

EPO T 1750/16 - link



Machine translation from the French original

Reasons for the decision

1. Admissibility of the appeal

1.1 The board is of the view that the appeal is admissible for the reasons set out below.

1.2 In the present case, the admissibility of the appeal depends on the conformity of the appeal brief with Article 108, third sentence, EPC, combined with Rule 99 (2) EPC. According to these provisions, in the statement of grounds of appeal, the applicant must indicate "the grounds on which the contested decision must be annulled or the extent to which it must be amended, as well as the facts and evidence on which the appeal is well-founded ".

The question whether the conditions of Article 108, third sentence, EPC and Rule 99 (2) EPC are satisfied must be decided on the basis of the statement of grounds of appeal and the grounds of the contested decision, in taking into account the amendments to the claims (see Case Law of the Boards of Appeal of the European Patent Office, 8th edition, IV.E.2.6.3a) with reference, inter alia, to decisions T 162/97 and T 2001 / 14).

T 1389/13 - Admissibility appeal; wrong name

Key points

• In this opposition appeal, the Notice of appeal was filed in the correct (new) name of the opponent, but the Statement of grounds mentioned the old name on the second page. The Board concludes that this does not lead to inadmissibility of the appeal
• " The statement of grounds of appeal that was subsequently received was signed by the same representative who had signed the notice of appeal and the notice of opposition. The appeal case number, the number of the patent in suit, the name of the (then sole) patent proprietor and the internal reference number mentioned in the document corresponded to the indications provided in the notice of appeal. Explicit reference was made to the "appeal of opponent filed on 13 June 2013"." 
• "The fact that "Bayer Schering Pharma AG", the opponent's former name, as proven by the documentary evidence, was indicated on the second page of the statement of grounds of appeal as the legal person on behalf of which the document was submitted, points to the fact that it was indeed on behalf of the opponent and not on behalf of a third party."
• " considering that there is no indication on file that a legal person called "Bayer Schering Pharma AG" existed at the point in time when the statement of grounds was filed, the mentioning of "Bayer Schering Pharma AG" in the statement of grounds of appeal is an obvious error and it is evident that it should read "Bayer Pharma AG" (or "Bayer Pharma Aktiengesellschaft").
• " Thus, the board has no doubt that the statement of grounds of appeal in question was indeed filed on behalf of the opponent, i.e. the party referred to as appellant II in these appeal proceedings." 
• The Board does not identify a formal request for correction of the appellant's name under Rule 139.
• There was also a request of the patentee for apportionment of costs. " The board notes that the latter line of argument on the perceived misconduct on the part of the EPO (the board dealing with the case) has no bearing on the board's decision about a different apportionment of costs under Article 104 EPC since the EPO is not a party to the proceedings, nor is it conceivable that the delay in forwarding the communication or the non-issuance of a written preliminary opinion can be ascribed to [the opponent]. Hence, these submissions need not be dealt with." 

EPO T 1389/13 -  link

Reasons for the Decision

1. The appeals of both appellants are admissible. Each of them complies with the requirements pursuant to Articles 106 to 108 and Rule 99 EPC.

2. Admissibility of the opponent's (appellant II's) appeal had been contested by appellant I based on the argument that no statement of grounds of appeal pursuant to Article 108, third sentence, EPC had been filed by the opponent, and the statement of grounds of appeal in question had been filed by a different legal person.

3. Notice of appeal dated 13 June 2013 was duly filed by the opponent Bayer Pharma Aktiengesellschaft and the appeal fee was duly paid. The notice of appeal comprises, in addition to the details required pursuant to Rule 99(1) EPC, the party's internal reference number.

T 2117/11 - Devolutive effect

Key points

• Before the Examining Division, the applicant had restricted the claims to a first invention, after an objection of lack of unity of invention, both claims having been searched. The refusal and the claims as filed with the Statement of grounds relate to that first invention. After the preliminary opinion of the Board, the applicant replaces the claims by claims directed to the second invention.
• The Board observes that it could refuse to admit the new claims under Article 12(2) RPBA, but adds that the " main obstacle to the admissibility of said requests, in the present case, rather results from the consequences of the devolutive effect associated with the filing of an appeal" 
• The Board then states that "The devolutive effect of the appeal extends only to the part of the impugned decision which is indicated in the statement of grounds for appeal and actually challenged by the appeal (cf. [T 1382/08]). This means that only those issues that were considered and decided upon in the decision can later on be challenged in appeal proceedings."
•  The Board then reasons that the impugned decision did not deal with the second invention, so that it can not be introduced in appeal.
• As a comment, T 1382/08 is about a not appealed part of a decision, namely about the refund of the paid additional search fee. Only the decision on the deemed withdrawal was appealed. This limits the scope of the appeal (Rule 99).
• As a further comment, the main rule of the "devolutive effect"  means that the Board is competent to decide on all issues of the application / patent (CLBA, IV.E.1.2). E.g., if an application was refused only for lack of clarity, the Board can also examine and refuse the application for lack of novelty. 
• My analysis is that the Board could have refused to admit the request quite simply under Rule 137(3) EPC, exercising the power of the ED (Article 111(1) EPC),  and applying the rule of G 2/92 , namely that only one invention is examined (see e.g. T 0736/14). 

EPO T 2117/11 - link

Reasons for the Decision

1. Admissibility of the appeal

The appeal meets the requirements of Articles 106 to 108 EPC and Rule 99 EPC. It is thus admissible.

2. Admissibility of the main and auxiliary requests

2.1 With the statement of grounds, an amended set of claims was filed to replace the set of claims underlying the impugned decision. These amended claims, as well as the claims underlying the impugned decision, were limited to a needle assembly. In the statement of grounds, the appellant took issue with the reasoning of the examining division as it resulted, more specifically, from the communication of 1 October 2010. The appellant, hence, neither filed a request for claims directed to a method, nor commented on the objection of unity which had been raised earlier in the course of the examination proceedings and had eventually led to his opting for claims limited to the needle assembly.

T 2001/14 - Buying time after Rule 71(3)

Key points - [C] (online 21.09.2015) -  appeal exceptionally allowable

• After oral proceedings before the Examining Division, a Rule 71(3) EPC Communication is issued for the sole request. The applicant files new requests. These are not admitted (Rule 137(3) EPC) and the application is refused. The applicant appeals. " In the statement of grounds of appeal, the appellant did not challenge the legal basis given in the appealed decision, nor did it give any reasons why the decision under appeal was wrong. In particular, no reason was given as to why, in the given circumstances of the present case, the division had not exercised its discretion under Rule 137(3) EPC in accordance with the right principles or had exercised its discretion in an unreasonable way"
• Instead, with the statement of grounds of appeal, the appellant filed new amended claims according to a main request and a first auxiliary request, as well as new claims according to a second auxiliary request, the claims being "identical with the statement of claim set out in the Official Communication under Rule 71(3) EPC".
• The appeal is exceptionally held admissible based on the second auxiliary request, as the filing of that request removes the factual basis of the decision. The case is remitted for further prosecution based on that request.
• After the appeal decision, the present application is withdrawn. The day before the oral proceedings before the Board, a divisional application had been filed, about 3 years after the Rule 71(3) communication for the parent, and of course after the abolition of the Rule 36 limit on filing divisional applications.
• This decision was earlier discussed at the DeltaPatents blog.

EPO T 2001/14 - link 

Summary of Facts and Submissions

I. The appeal concerns the decision of the examining division refusing European patent application No. 09159210.

II. The examining division issued a communication under Rule 71(3) EPC dated 30 July 2012 informing the applicant that it intended to grant a patent on the basis of a set of claims of a sole request submitted by the applicant during oral proceedings before the examining division.

III. The applicant did not consent to the text proposed for grant but instead, with a letter dated 10 December 2012, submitted claims of a new main request and requested the grant of the patent on the basis of these claims, or, as an auxiliary request, based on the claims as indicated in the communication under Rule 71(3) EPC.

IV. By a letter dated 12 December 2012, the applicant withdrew the "auxiliary request as of December 10, 2012".

V. In a communication dated 2 January 2013, the examining division expressed its preliminary view that, prima facie, claim 1 of the main request then on file would lead to objections that had already been overcome during oral proceedings and that, considering that two auxiliary requests had already been discussed during the oral proceedings, the applicant was not considered to be entitled to call into question the outcome of the previous course of the proceedings. It further informed the applicant that the application would be refused under Article 90(5) and Rule 137(3) EPC.

VI. With a letter dated 13 May 2013, the applicant submitted claims of a new auxiliary request 1.

VII. In its decision the examining division exercised its discretion as provided for in Rule 137(3) EPC and did not consent to the amendments to the claims of the main request filed with the letter dated 10 December 2012 and of the auxiliary request 1 filed with the letter dated 13 May 2013. The examining division gave reasons in the decision under appeal why it refused its consent to these amendments, which replaced the text of the application on the basis of which a patent could have been granted according to the communication under Rule 71(3) EPC dated 30 July 2012. Since only the claims according to the main request and the auxiliary request 1 were then on file, the application was refused.

VIII. The applicant (appellant) appealed against the decision of the examining division.

Within the two-month period under Article 108, first sentence, EPC, a notice of appeal was filed and the prescribed appeal fee was paid (Article 108, first and second sentences, EPC). The statement setting out the grounds of appeal was filed within the four-month period under Article 108, third sentence, EPC.

In the statement of grounds of appeal, the appellant did not challenge the legal basis given in the appealed decision, nor did it give any reasons why the decision under appeal was wrong. In particular, no reason was given as to why, in the given circumstances of the present case, the division had not exercised its discretion under Rule 137(3) EPC in accordance with the right principles.

Instead, with the statement of grounds of appeal, the appellant filed new amended claims according to a main request and a first auxiliary request, as well as new claims according to a second auxiliary request, the claims being "identical with the statement of claim set out in the Official Communication under Rule 71(3) EPC".

IX. The board sent a communication under Article 15(1) RPBA annexed to the summons to oral proceedings.

In that communication, the board expressed doubts that the appeal was admissible since the statement of grounds of appeal appeared unsubstantiated and thus seemed not to comply with the requirements of Article 108, third sentence, and Rule 99(2) EPC.

The board also stated that the claims according to the second auxiliary request filed with the statement of grounds of appeal were identical to the claims which formed the basis for the communication under Rule 71(3) EPC dated 30 July 2012 and this fact could play a role for the question whether the appeal was admissible in view of the jurisprudence of the boards of appeal.

The board also informed the appellant that, if the appeal was found admissible, the debate would continue in the oral proceedings on the allowability of the appeal and that the first issue for discussion on the allowability of the appeal would be the admission of the requests in view of Article 12(4) RPBA. The board expressed its view that the admissibility of the main request and the first auxiliary request then on file was highly doubtful whereas the second auxiliary request could be considered admissible because the claims of this request formed the basis on which the examining division intended to grant a patent.

X. With a letter dated 13 May 2015, the appellant filed new claims according to a new main request and according to new first to third auxiliary requests.

XI. At the oral proceedings before the board the appellant (applicant) requested that the decision under appeal be set aside and that a patent be granted on the basis of claims 1 to 5 of the main request, or claims 1 to 4 of the first auxiliary request, or claims 1 to 4 of the second auxiliary request, or claims 1 to 3 of the third auxiliary request, all requests filed with letter dated 13 May 2015. [...]

Reasons for the Decision

1. Admissibility of the appeal

1.1 According to Article 108, third sentence, EPC a statement setting out the grounds of appeal must be filed in accordance with the Implementing Regulations within four months of notification of the decision. Furthermore, Rule 99(2) EPC provides that in the statement of grounds of appeal the appellant must indicate the reasons for setting aside the decision, or the extent to which it is to be amended and the facts and evidence on which the appeal is based.

1.2 It is an established general principle that the grounds for appeal should specify the legal or factual reasons on which the case for setting aside the decision is based. The arguments must be clearly and concisely presented to enable the board to understand immediately why the decision is alleged to be incorrect, and on what facts the appellant bases his arguments, without first having to make investigations of its own (see Case Law of the Boards of Appeal of the European Patent Office, 7th edition, September 2013, section IV.E.2.6.3 a)). Moreover, the grounds of appeal must deal with the main reasons given for the contested decision (see, for example, T 213/85, OJ EPO 1987, 482, point 3 of the Reasons).

1.3 The examination of whether the requirements of Article 108, third sentence, and Rule 99(2) EPC are met has to be made on the basis of the statement of grounds of appeal and of the reasons given in the contested decision, taking into account any amendments made to the claims (see for example J 22/86, OJ EPO 1987, 280, point 2 of the Reasons; T 162/97, point 1.1.2 of the Reasons).

1.4 In the present case the examining division exercised its discretion as provided for in Rule 137(3) EPC and did not consent to the amendments to the claims of the main request filed with the letter dated 10 December 2012 and of the auxiliary request filed with the letter dated 13 May 2013. The examining division gave reasons in the decision under appeal why it refused its consent to these amendments, replacing the text of the applica­tion on the basis of which a patent could have been granted according to the communication under Rule 71(3) EPC dated 30 July 2012. Since only the claims according to the main request and the auxiliary request were then on file, the application was refused.

1.5 In decision G 7/93 (see point 2.6 of the Reasons) the Enlarged Board of Appeal stated that if an examining division has exercised its discretion under Rule 86(3) EPC 1973 (which corresponds to Rule 137(3) EPC) against an applicant in a particular case and the applicant files an appeal against the way in which such discretion was exercised, it is not the function of a board of appeal to review all the facts and circumstances of the case as if it were in the place of the first-instance department, in order to decide whether or not it would have exercised such discretion in the same way as the first-instance department. The Enlarged Board of Appeal added that if a first-instance department is required under the EPC to exercise its discretion in certain circumstances, such a department should have a certain degree of freedom when exercising that discretion, without interference from the boards of appeal and that a board of appeal should only overrule the way in which a first-instance department has exercised its discretion if it comes to the conclusion either that the first-instance department in its decision has not exercised its discretion in accordance with the right principles, or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion.

1.6 In the statement of grounds of appeal, the appellant did not challenge the legal basis given in the appealed decision, nor did it give any reasons why the decision under appeal was alleged to be wrong. In particular, no reason was given as to why, in the circumstances of the present case, the appellant thought that the division had not exercised its discretion under Rule 137(3) EPC in accordance with the right principles or had exercised its discretion in an unreasonable way. Since the appellant did not provide in the statement of grounds of appeal any reasons as to why the decision was alleged to be incorrect, the reasoning contained in the statement is insufficient to meet the requirements of Article 108, third sentence, and Rule 99(2) EPC. This would usually mean that the appeal has to be found inadmissible (Rule 101(1) EPC).

1.7 With the statement of the grounds of appeal, the appellant filed new amended claims according to a main request and a first auxiliary request, as well as new claims according to a second auxiliary request. The claims according to this second auxiliary request are indicated as being "identical with the statement of claim set out in the Official Communication under Rule 71(3) EPC dated July 13, 2012 [sic]".

In its decision, the examining division exercised its discretion under Rule 137(3) EPC and refused its consent to replace the text of the applica­tion on the basis of which a patent could have been granted by the requests then on file. These reasons for refusing the examining division's consent apparently do not apply to the claims of the second auxiliary request, filed with the statement of grounds of appeal, since these claims relate to precisely the claims intended for grant according to the communication under Rule 71(3) EPC dated 30 July 2012.

In view of the above, the mere filing of the second auxiliary request is to be interpreted as removing the factual basis for the refusal, thereby overcoming the reasons for the refusal.

In these exceptional circumstances, the requirements of Article 108, third sentence, and Rule 99(2) EPC are considered to be met in respect of the second auxiliary request.

1.8 Since the admissibility of an appeal can only be assessed as a whole (see T 509/07, point 1.4 of the Reasons) the appeal is admissible.

2. Admission of the main request and the first and second auxiliary requests, all requests filed with letter dated 13 May 2015.

2.1 According to Article 12(2) RPBA, the statement of the grounds of appeal must contain a party's complete case. Any amendment to a party's case after it has filed its grounds of appeal may, according to Article 13(1) RPBA, be admitted and considered at the board's discretion. The discretion must be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.

2.2 The sets of claims submitted as the main request and as first and second auxiliary requests were filed with the letter dated 13 May 2015 in reply to the board's communication under Article 15(1) RPBA about one month before the oral proceedings. Hence the amendments to the appellant's case were filed after the statement of the grounds of appeal. The new requests are there­fore an amendment to the appellant's case within the meaning of Article 13(1) RPBA. Consequently, the ad­mission of these requests is at the board's discretion.

2.3 The appellant argued that the new sets of claims were a reaction to the board's communication. As it could be deduced from this communication that the second auxiliary request then on file was the most promising request, the new sets of claims were based on that request.

However, this argument does not apply to the set of claims according to the first auxiliary request, which evidently relates to subject-matter that is signi­ficantly different from the subject-matter claimed in the second auxiliary request underlying the board's communication (which corresponds to the present third auxiliary request).

Furthermore, it was already evident in the first-instance proceedings that the claims according to the former second auxiliary request were promising since they formed the basis for the communication of the examining division under Rule 71(3) EPC, informing the applicant that it intended to grant a patent. The communication under Article 15(1) RPBA of the board did not add anything in this respect as it related merely to the board's provisional opinion concerning procedural issues, namely the admissibility of the appeal and the admission of the requests then on file.

The claims of the main request and the first and second auxiliary requests are therefore not considered to be a response to points raised in the board's communication.

2.4 The appellant also argued that the new sets of claims were filed late for procedural economy, as this avoided the examining division having to deal with a large number of auxiliary requests.

However, if the present main request and the first and second auxiliary requests were admitted into the appeal proceedings, the board might well remit the case to the department of first instance for substantive examination of these requests in two instances. The examining division would then have to deal with the requests, while the conduct of the appellant would have led to a considerable delay in the proceedings. Furthermore, the examining division would possibly have to re-open substantive examination with the possible result of further communications and even a second refusal and subsequent appeal proceedings.

The filing of the claims of the main request and the first and second auxiliary requests at this late stage of proceedings is therefore considered to be contrary to the interests of procedural economy.

2.5 Furthermore, were the board to deal with the substantive examination of the claims according to the present main request and the first and second auxiliary requests, complex discussions might well ensue, in particular in relation to the requirements of clarity and the basis in the original application documents as well as novelty and inventive step. This is for example to be expected in relation to the features deleted as compared to the subject-matter of claim 1 of the present third auxiliary request, e. g. those relating to the display.

2.6 In view of the above considerations, exercising its discretion under Article 13(1) RPBA, the board does not admit the main request and first and second auxiliary requests into the proceedings.

3. Admission of the third auxiliary request filed with letter dated 13 May 2015 and further procedure

3.1 The third auxiliary request was filed after the statement of the grounds of appeal and it is therefore an amendment to the appellant's case within the meaning of Article 13(1) RPBA. However, since the claims of the present third auxiliary request are identical to those of the second auxiliary request, filed with the statement of grounds of appeal, it is appropriate for the board to also consider the provisions of Article 12(4) RPBA when exercising its discretion under Article 13(1) RPBA.

The claims according to the present third auxiliary request are also identical to the claims which formed the basis for the communication under Rule 71(3) EPC dated 30 July 2012. In these exceptional circumstances, the board sees no reason not to admit the third auxiliary request under Article 12(4) RPBA although this request was withdrawn in the first-instance proceedings and re-filed with the statement of grounds of appeal. Therefore the board admits the third auxiliary request into the proceedings.

3.2 Since the claims of the third auxiliary request are identical to those forming the basis on which the examining division intended to grant a patent, it is considered to be appropriate to remit the case to the department of first instance for further prosecution on the basis of the present third auxiliary request (Article 111(1) EPC).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.

T 1738/11 - New arguments in appeal

T 1738/11
For the decision, click here. [C]

Key points

• The opponent appealed and the statement of grounds was based on newly filed documents.
• The appeal is admissible, because "It is established case law that an appeal raising a case different from that on what the decision under appeal was based ("fresh case") but on the same opposition ground, is in principle admissible"
• The novelty attack based on the new documents was a fresh ground of opposition and was not admitted.
• The new documents were not admitted, as were the new arguments submitted before the oral proceedings.
• " The appeal relies entirely on new evidence and late submissions, none of which have been admitted into the proceedings. The Board can but conclude that the appeal is without merit and must fail."

Summary of Facts and Submissions

I. The appeal lies from the decision of the opposition division, dated 13 April 2011 and posted on 23 May 2011, to maintain the European patent No. 1 703 789 in amended form pursuant to Article 101(3)(a) EPC. The appellant (opponent) filed a notice of appeal on 26 July 2011, paying the appeal fee on the same day. The statement of grounds of appeal was submitted on 3 October 2011.

Reasons for the Decision

1. Admissibility of the appeal

1.1 The respondent argues that the statement of grounds of appeal almost completely failed to identify reasons why the appellant opponent considered the decision under appeal to be wrong. Rather, the appellant opponent's arguments brought forward related to completely new and irrelevant documents D21, D22, and D23. Presenting new facts and evidence in the grounds of appeal constituted a new opposition and, therefore, the appeal was inadmissible.

T 0037/12 - Handwritten amendments in appeal

Key point

• Handwritten amendments are allowable in appeal. 

EPO Headnote (informal translation)
1. When applying the general reference in Rule 99(3) EPC it is required, according to its development and purpose, to assess whether and how the referred rules are to be applied in the specific circumstances.
2. Applying Rules 49(8) and 50(1) EPC equally to documents filed during oral proceedings before the Board of Appeal, would contradict procedural economy and is not necessary on other grounds.
3. The introduction of Rule 99(3) EPC therefore gives no reason for abandoning the established practice according to which documents filed during oral proceedings before the Boards of Appeal may contain legible handwritten amendments.

This post was kept in stock for some time.

T 0037/12 of 26.03.2015

Dated 02.10.2014 - Board 3.2.01 (Pricolo, Marx, Guntz) - publication B - in German - for the decision, click here

EPO Headnote

1. Bei Anwendung der Generalverweisung in Regel 99 (3) EPÜ ist nach deren Entstehungsgeschichte und Zweck im Einzelfall zu prüfen, ob und wie eine der Regeln, auf die verwiesen wird, auf einen bestimmten Sachverhalt anzuwenden ist.

2. Eine entsprechende Anwendung der Regeln 49 (8) und 50 (1) EPÜ auf Unterlagen, die während der mündlichen Verhandlung vor der Beschwerdekammer eingereicht werden, würde der Verfahrensökonomie widersprechen und ist auch nicht aus anderen Gründen geboten.

3. Die Einführung von Regel 99 (3) EPÜ hat daher keinen Anlass gegeben, die jahrelang geübte Praxis aufzugeben, wonach in der mündlichen Verhandlung vor der Beschwerdekammer eingereichte Unterlagen gut lesbare handschriftliche Änderungen aufweisen dürfen.

[Decision omitted] 

T 1480/12 - Combining claims, still need to file claims set

Key points

• Amended sets of claims need to be filed on separate sheets, also in appeal, even if you just combine two claims.

T 1480/12 - 23.01.2015

Dated 10.12.2014 - Board 3.4.03 - publication C - for the decision, click here

This post was kept in stock for some time.

T 0423/11 - Appeal without name appellant

Key point

• Appeal is admissible even if the Notice of Appeal is filed by "the opponent" (without his name).
• Transfer of opposition registered 8 years after actual transfer of business assets.
• Action of opponent performed in the meantime are valid because transfer of opposition is only effective as of "ex nunc" (date of filing request of transfer and required evidence)

T 0423/11

Online 30.04.2015 - dated 11.03.2015 - Board 3.5.06 (Tardo-Dino, Krischer, Teale) - for the decision, click here

Summary of Facts and Submissions

I. This is an interlocutory decision on the admissibility of the appeal and the validity of the transfer of opponent status.

II. A notice of opposition was filed on 7 January 2004 by SAGEM SA represented by [person B] against the European patent No. 0834121.

III. In an interlocutory decision dispatched on 17 December 2010 the opposition division found that the patent as amended in opposition proceedings met the requirements of the EPC.

IV. A notice of appeal was filed on 17 February 2011 by "the opponent" represented by [person B] against this decision. The opponent's name was not indicated.