T 1332/21 - Agreeing with the OD, as appellant / review of decision to admit

Key points

• "The patent proprietor as well as the opponent appealed the Opposition Division's interlocutory decision that the disputed patent may be maintained in amended form based on the patent proprietor's second auxiliary request".
• The proprietor defended the claims as granted with the Statement of ground.
• "During oral proceedings [before the board] the patent proprietor defended, as its main request, the patent in the form of auxiliary request 2 as amended before the Opposition Division."
• "Thus, the final requests of the parties were the following:

  The patent proprietor requested the patent to be maintained on the basis of auxiliary request 2 underlying the impugned decision, i. e. in the form it was maintained by the Opposition Division, or on the basis of auxiliary request 3, filed on 21 March 2022 together with the reply to the opponent's grounds of appeal."

• As a question, is there still a valid appeal of the proprietor at this point in the procedure? Could an appeal become inadmissible in the course of the procedure?
  
  

• " The opponent argued that auxiliary request 2, filed during oral proceedings before the Opposition Division, should not have been admitted into opposition proceedings due to its late filing. "
• "There was thus no misuse of discretion by the Opposition Division. The Opposition Division decided to admit the request based on relevant criteria in a reasonable way.  The Board thus sees no reason to overrule the Opposition Division's decision to admit this request into the proceedings. In view of Article 12(1) RPBA this request is part of the appeal proceedings."
• The remarkable point is that the Board considers itself to be competent to review this decision of the OD to admit a request. For a different approach, see, e.g. T 0617/16 and T 1884/19. 
• 
  

EPO 

The link to the decision and the decision's text are given after the jump.

T 0983/20 - Admissibility and admissibility

Key points

• This post is kind of at the EQE level, but still illustrative.
• The OD rejected the opposition. The opponent appeals.
• "In the contested decision, the opposition division considered the solution proposed by claim 1 as granted to involve an inventive step. In section 2.2 of the reasons for the decision the opposition division addressed the opponent's objection of obviousness based on a combination of D1 and  D2. The opposition division summarised the opponent's arguments and set out two reasons why they were not found convincing".
• " In the statement of grounds of appeal the appellant (opponent) requested that the decision under appeal be set aside and that the patent be revoked in its entirety. They submitted that the subject-matter of all of the claims 1 to 7 of the patent lacked an inventive step over a combination of D1 and D2."
• "With further submissions filed after the statement of grounds of appeal, the appellant presented further arguments regarding the objection of lack of inventive step over documents D1 and D2. The appellant also presented a new objection of lack of novelty under Article 54(3) EPC over [D3, ] a European patent application which had not previously been cited."
• The Board considers the appeal to be inadmissible under R.99(2). 
•  "the Board concurs with the respondents that the statement of grounds of appeal does not address the reasons given in the contested decision as to why the subject-matter of claim 1 is not rendered obvious by the combination of document D1 and document D2."
• "The statement of grounds of appeal to a large extent merely repeats the submissions that were made in the letter of 10 October 2019 prior to the oral proceedings before the opposition division. The statement of grounds of appeal does not address or deal with the reasons set out in the penultimate paragraph of section 2.2 of the reasons for the decision and does not enable the board to understand immediately why they should be incorrect."
• The appeal is rejected as inadmissible.
• The Board does not arrive at the new attacks based on D3. 
• The decision illustrates that admissibility under Rule 99(2) is not a discretionary decision and is "all or nothing". Admissibility under Rule 99(2) and under Art. 12, RPBA should not be conflated. 
• 
  

EPO 

The link to the decision is provided after the jump. 

T 1854/16 - Applying Rule 99(2) EPC to individual grounds

Key points

•  Both the patentee and opponent appeal in this opposition appeal.
• "In the disputed decision, the Opposition Division concluded that the opposition grounds under Article 100(a) EPC in combination with Articles 52(2)(c) and 53(c) EPC against the patent as granted were unfounded"
• "The opponent did not contest this part of the decision during appeal proceedings."
• "Hence, the Board has no power to consider this part of the decision under appeal."
• As a comment, the  Board does not indicate the legal basis. It does mention Rule 99(2) in a further paragraph of the decision; see below.
• 
  
• "In the disputed decision, the Opposition Division concluded that the opposition grounds under Articles 100(c) EPC, 100(b) EPC, and 100(a) in combination with Articles 52(1) and 54 EPC (lack of novelty) against the patent as granted were unfounded In the disputed decision, the Opposition Division concluded that the opposition grounds under Articles 100(c) EPC, 100(b) EPC, and 100(a) in combination with Articles 52(1) and 54 EPC (lack of novelty) against the patent as granted were unfounded "
• "With the statement of grounds, the opponent explicitly maintained the corresponding objections, but only provided a copy of its arguments in its notice of opposition []. No explanation was given as to why the decision of the Opposition Division in this regards was wrong."
• " Since - contrary to Rule 99(2) EPC - no reasons are provided for setting aside the findings of the Opposition Division with regard to these aspects, these opposition grounds are not admissibly raised in the appeal. The Board has no power to review the Opposition Division's findings on these points."
• The Board considers the opponent's submission regarding inventive step, i.e. the opponent's appeal is not inadmissible. 
• As a comment, Rule 99(2) EPC is about the admissibility of the appeal. The Board applies this rule so as to provide for the partial (in)admissibility of the appeal* without a discretion to hear later submissions on the matter as envisaged by Art. 13 RPBA. Established case law, however, is that there is no concept of partial admissibility of an appeal. See e.g. T 1320/19 or T1679/21: “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."
• As a comment, and in connection with the * above, Rule 99 is cited by the Board in connection with the patentee's main request, but the opponent's appeal concerns only Auxiliary Request 1'' (the set of claims held allowable by the OD). So the provision seems to be cited against the opponent as the respondent, if I understand the case correctly. 
• The fact that the opponent also files an appeal does not make that it must address claim requests held unallowable by the OD already in its statement of ground, it seems to me.
• As a comment, this decision is remarkable in firstly in citing Rule 99(2) for individual grounds of opposition, and secondly for possibly applying it against the opponent in its capacity as respondent. 

EPO T 1854/16 

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

T 2558/16 - Appeal admissible and admissibility of requests

Key points

•  The Board: in translation (r.6) " For an appeal to be admissible, it is not necessary for the appellant to challenge the opposition division's decision as erroneous. According to established case law (cf. "Case Law of the Boards of Appeal of the European Patent Office", 9th edition 2019, VA2.6.5 c)), a statement of grounds of appeal can also be regarded as sufficient if new facts are presented which take away the legal basis for the decision. In particular, an appellant [appealing patentee] can present amended sets of claims and explain why these [amendments] are suitable for eliminating the deficiencies complained of in the contested decision. Exceptionally, however, a new request which obviously serves to remove the ground for revocation, for example because a feature objected to by the opposition division under Article 123(2) EPC is replaced by a suitable amendment, can be made without further justification as to why the decision under appeal is considered wrong, constitutes an immediately recognizable and sufficiently direct link between the decision under appeal and the statement of grounds of appeal (see T 1276/05, point 1.2 of the statement of reasons for the decision; T 933/04, point 1.2.3 of the statement of reasons)." 
• The Board: " The question of admissibility of the appeal does not depend on whether the amended claims are subsequently admitted into the proceedings by the board or whether the appellant's submissions are ultimately convincing."

EPO 

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

T 0364/18 - Extent of opposition; 7 independent claims after amendment

Key points

•  This decision was already published in May 2021 but is still interesting.
• In this opposition appeal, with the opponent filing the appeal, the Board considers the main request to be not novel and turns to the auxiliary request.
• " The notice of opposition, first paragraph, expressly requested revocation of claims 1-5, 8, 9, 11, 15-17, 19 and 20. This request was repeated at the start of oral proceedings before the opposition division [] and again upon appeal []. The board sees herein an express statement that the patent is opposed and the decision is appealed only in as far as the claims mentioned are concerned, thus defining the extent of opposition according to Rule 76(2)(c), respectively the extent to which decision is to be amended according to Rule 99(2) EPC. Consequently, and in accordance with the principle of ne ultra petita the board sees itself limited to examining the patent only for the claims opposed." 
• " The Auxiliary Request is directed at the subject-matter of unopposed granted claims 6, 7, 10, 12 to 14 and 18, in the form of independent claims 1 to 7 combining the features of respective ones of these claims with granted claim 1. As it is thus directed at the subject-matters not opposed, and the board has no power to examine such subject-matter, the patent must be maintained in this limited form." 
• Having 7 independent claims, all for a hydraulic machine (see the claims here, are indeed perfectly fine in opposition in these circumstances.
• " the board does not have the power to examine patentability of the Auxiliary Request. Therefore, the patent can be maintained in an amended form on the basis of the Auxiliary Request pursuant to Article 101(3)(a) EPC, provided that the description is adapted to the amended claims." 

EPO 

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

T 1241/18 - (III) Repeating arguments was enough

Key points

•  The OD decides to maintain the patent as granted. The opponent appeals. The question is whether the appeal is admissible, in particular whether the Statement of grounds is sufficiently substantiated.
• The Board: " the sole fact that a statement of grounds of appeal contains a repetition of arguments provided before the opposition division as such is not sufficient for the appeal to be considered insufficiently substantiated. " 
• " The board is convinced that, in the present case, the first instance proceedings and more specifically the decision under appeal did not give rise in any way to the necessity for an adapted line of argumentation or a focused discussion of particular reasons given in the decision under appeal." 
• " the board observes that the relevant parts of the decision under appeal contain a summary of the parties' arguments followed by the opposition division's opinion. The appellant's arguments provided in the statement of grounds of appeal are clearly consistent with the arguments that were taken into account by the opposition division." 
• " In the present case, the decision under appeal did not contain anything that would have given the appellant reason to correct or adapt their line of argumentation or to expressly discuss certain views adopted by the opposition division. The repetition of the substantial arguments already put forward in the first instance proceedings therefore was a justified reaction to the decision under appeal in the specific case, which served the purpose of convincing the board." 
• " point 15.2 of the reasons for the decision under appeal consists largely of a repetition of the parties' arguments, while the opposition division expressed their own opinion on novelty of the subject-matter of claim 1 merely in a single paragraph on page 6. An even shorter paragraph of the division's reasoning on novelty of the subject-matter of claim 4 is present on page 7." 
• " The statement of grounds of appeal provided detailed and well-reasoned arguments on the points that were discussed in the decision under appeal, namely novelty of the subject-matter of claims 1 and 4 over D6 and inventive step of the subject-matter of claims 1 and 4 in view of D7. " 
• " The board has therefore come to the conclusion that the requirements of Article 108 EPC in conjunction with Rule 99(2) EPC are fulfilled." 
• 
  

EPO T 1241/18

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

T 1891/20 - Intervention by entity related to opponent

 Key points

•  A legal entity belonging to the same economic group as one of the opponents files an intervention. The patentee objects that the intervention is inadmissible because the opponent and the intervener would not be separate parties.
• The Board: " In the present case, the intervener did not have the status of an "opponent" in the opposition proceedings. In particular, the intervener is a legal entity which is separate from appellant II. This has not been disputed by the respondent. In T 305/08, it was stated that "any third party" in Article 105(1) EPC cannot be given an interpretation other than that each party must be a separate legal entity, and that this also applies to an intervention filed by a legal entity belonging to the same group of companies as the opponent (Reasons 1.5.2)." The Board follows this case law.
• The Board: “ As to the respondent's objection to appellant II and the intervener having a common representative, the board refers to Rule 151 EPC, according to which parties may appoint a common representative. ”
• As a comment, I think this is confusing.  Rule 151(1) first sentence refers only to the case of multiple applicants. Rule 151(1) third sentence reads: “The same shall apply to third parties acting in common in filing a notice of opposition or intervention and to joint proprietors of a European patent.” As I understand it, this refers to joint opponents (multiple natural or legal persons filing a single opposition and paying one opposition fee, see G 3/99) and to joint proprietors (including the backreference to the mandatory common representative of Rule 151(1), first and second sentence). The opponent and intervener in the present case are not joint parties. Nevertheless, there is no provision prohibiting two (non-joint) opponents from appointing the same representative. However, it would indeed be very confusing if the same representative speaks for two (non-joint) parties (“Mr/Ms. Chair, thank you, Opponent 1 has no novelty objections and Opponent 2 submits that claim 1 is not novel over D4”).
• The Board, on the admissibility of the appeal: “Questions of admittance of allegedly late-filed submissions and the admissibility of an appeal should not be mixed up (see e.g. T 2069/15, Reasons 4). With regard to the latter, the board does not see any convincing reasons why the appeals of appellants I and II should be considered inadmissible under Rule 99(2) EPC.”

T 1891/20 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t201891eu1.html

Reasons for the Decision

1. Admissibility of the intervention (Article 105 EPC)

1.1 The respondent requested that the intervention be dismissed, for the following reasons:

i) During the licence negotiations following the appealed decision, the intervener claimed to be equivalent to appellant II, so that they would automatically inherit the rights of appellant II in the framework of a legal agreement concerning, inter alia, the patent under dispute. In fact, the main representative of appellant II in the cross-licence agreement was Mr. Branzka, which was listed in an e-mail of 25 January 2017 as Director of Patents/Licences for the intervener, while successive e-mails of the same thread defended the position of appellant II. The identity between both appellant II and intervener was reinforced by the fact that the notice of intervention was filed in the name of the intervener, but with the same address and the same representative as the notice of opposition of appellant II filed two years earlier. The position of the intervener was contradictory. On the one hand, they tried to defend that appellant II "does not qualify as a different party" from the intervener on a cross-licence agreement signed by the intervener but, on the other hand, tried to defend that the intervener and appellant II were different entities that should have rights as different parties to the opposition proceedings.

T 0715/16 - An objection that never is late

 Key points

• “In their letter dated 30 January 2020 the patent proprietor contested - for the first time - the admissibility of the opponent's appeal. The board concurs with the findings in T 15/01 (OJ EPO 2006, 153, point 1 of the Reasons) that the admissibility of an appeal can and has to be examined at every stage of the appeal procedure ”
• “Unlike the position taken in T 670/09 (point 1.1.1 of the Reasons), an objection to admissibility of an appeal can therefore not be disregarded for the mere reason that it was raised at a late stage of the appeal proceedings.”
• The applicable RPBA are not expressly discussed in connection with this point.
  
  
• “Further, the board is not aware of any legal basis pursuant to which the repeated invoking of the person skilled in the art without citing correspondent pieces of evidence should have as a consequence that the appeal is found inadmissible. According to T 766/91, cited by the patent proprietor in this respect, evidence of general technical knowledge is indeed required if it is challenged by another party. Yet T 766/91 also rules that for the purposes of admissibility of the appeal it would be sufficient to state a fact and allege that it is general knowledge in the art concerned, without the need for referring to a particular publication”
• 
  

T 0715/16 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t160715eu1.html

decision text omitted.

T 1320/19 - A summary of Rule 99(2) case law

Key points

“The Boards of Appeal have developed consistent jurisprudence on the conditions under which an appeal may be rejected as inadmissible for lack of adequate substantiation. This includes the following principles:

(a) If the admissibility requirements are fulfilled in respect of at least one request, the appeal as a whole is admissible (Case Law of the Boards of Appeal [CLB], 9th edition 2019, V.A.2.6.3, third paragraph).

(b) It is not an absolute requirement for admissibility that the appellant should attack the contested decision as flawed. Where amended claims are filed, an appeal [by an applicant or patentee] may also be admissible if sufficient reasons are given in the statement of grounds why the amendments are considered apt to remedy the deficiencies identified by the opposition division (CLB, supra, V.A.2.6.5.c)).

(c) Whether the appellant's arguments are convincing or likely to be successful is irrelevant for the purposes of determining the admissibility of the appeal (CLB, supra, V.A.2.6.2, first paragraph, final sentence, and 2.6.6).”

• “ an appeal is not necessarily rendered inadmissible by an appellant-proprietor filing amended claims, and defending the patent solely on the basis of claims as amended in the grounds of appeal”
• “The mere absence of any admissible request from an appellant-proprietor does not constitute per se a sufficient reason that automatically renders the appeal inadmissible, but rather could lead to a dismissal of such appeal.”
• In the case at hand, the appeal of the patentee is found to be admissible. However, the sole claim request is not admitted into the proceedings and the appeal is dismissed.

T 1320/19 

https://www.epo.org/law-practice/case-law-appeals/recent/t191320eu1.html

decision text omitted.

T 1099/16 - Second use claim

 Key points

Non-medical second use claim

• Claim 1 of the patent is a use claim of certain compounds (melamine derivatives) as "as an adhesion enhancer in [a polymer jacket of] an elevator load bearing member". Inventive step is to be decided. The closest prior art is D7 disclosing the use of different compounds as flame retardant in a polymer jacket of an elevator load bearing member. The melamine derivatives of claim 1 are well-known flame retardant. “The use of any of the specific melamine derivatives instead of melamine in a polymer jacket of D7 for their well known flame retardant effect would thus not appear to involve an inventive step.” The question is whether the use feature "as an adhesion enhancer" provides for inventive step. The opponent bascially considers the effect of enhanced adhesion not credible but faces the procedural problem that Art.100(b) is a fresh ground of opposition. 
• “the use of these melamine derivatives [the compounds] as an adhesion enhancer is not known in the prior art, as also acknowledged by the [opponent]. Their use as an adhesion enhancer could thus be considered to involve an inventive step, on the proviso that this use were acknowledged to be a limiting functional feature of the claim within the meaning of G2/88”
• “The Board considers that [G2/88 hn.3] establishes two conditions for interpreting a claimed new purpose (reflecting a new technical effect) as a functional technical feature of the claim which may serve to distinguish the subject-matter over the prior art. Besides the condition that the technical effect has not been made available to the public before the relevant priority date of the application at issue, it is also required that the technical effect in which the claimed use resides, is "described" in the patent”
• “The present decision thus hinges on the interpretation of the expression "described in the patent" used in G 2/88. The two extremes which are conceivably covered by this expression appear to be, on the one hand, i) that the new technical effect must be described in the patent to such an extent that the skilled person understands that the effect is indeed achieved or that the effect is at least plausible, as essentially argued by the appellant as being the relevant standard, or, on the other hand, ii) that the wording of the technical effect is only required to be supported, e.g. merely stated in the description. ... Option ii) resembles the condition of support of the claims by the description according to Article 84 EPC.”
• I'm not sure if all  Boards would agree that merely formal support is sufficient under Art.84.
• The Board notes that there is not much case law on this point. The Board concludes that the question is “merely whether it has been described in the sense that a skilled person can recognize what technical effect is underlying the new purpose claimed” instead of considerations of whether the technical effect is sufficiently credibly or plausibly described in the patent.
• The Board finds that the patent describes the technical effect in that limited sense for the purposes of G2/88. Up to that point the Board does not actually decide that the effect is plausible (if I see it correctly). However, because G2/03, r.2.5.2 said that “if an effect is expressed in a claim, there is lack of sufficient disclosure” and because Art.100(b) is a fresh ground in appeal (and the patentee does not consent) (G10/91) the Board does not need to decide on the actually contested point.

Admissibility appeal

• In the case of an appeal against the rejection of an opposition, there is no reason that an appellant-opponent must rebut all issues decided by the opposition division against it. As long as the appellant sets out reasons in the appeal grounds concerning at least one of the opposition grounds considered in the impugned decision which, if found convincing by the Board, could result in setting aside the decision, the requirement of Rule 99(2) EPC is generally considered to be met.

Request for extended composition of the Board

• The appellant had requested an extended panel (Art. 21)(4)(a) EPC). The Board refuses the request.
Further, if consideration of the technical issues might have arisen beyond these legal issues, the Board cannot see that the underlying matter would have required particular knowledge of molecular chemistry. The technical concepts of adhesion and polarity of molecules belong to common technical university education, not least in the field of mechanical engineering. No reason is evident why the Board's technical competence would be unable to deal with any technical matters arising in this case. Additionally it is noted, as also held by the Enlarged Board of Appeal in R 3/12 (unpublished), Reasons 2.4, that, for the sake of argument, even if the Board's decision were finally based on an imperfect understanding of the technical issues, this would have no implications for the technical qualifications of the Board members in the sense of Article 21 EPC, since this provision only implies a prescribed course of technical education of the members rather than providing a guarantee of an unquestionable understanding of a specific case. There is also no particular case law deriving from the Boards of Appeal in the field of chemistry which the present Board would not be aware of or be unable to apply where fitting. Consequently it was concluded that the nature of the appeal did not require the Board to be complemented by additional Members.

T 1099/16 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t161099eu1.html

EPO Headnote

In order to decide whether a claim to the use of a known compound for a particular purpose, based on a technical effect which is described in the patent, should be interpreted as including that technical effect as a functional technical feature according to G 2/88, the Board finds that G 2/88 does not require the technical effect to be described in the patent in a manner sufficiently clear and complete to make the actual achievement of that technical effect credible (Reasons 17).
This finding applies even to a case where the ground for opposition under Article 100(b) EPC cannot be considered in the appeal proceedings (Reasons 24).
If, for the assessment of inventive step, it has to be determined whether the purpose defined in the claim can be interpreted as a limiting functional feature, the question whether the technical effect is described in the patent merely involves considering whether a skilled person can recognise what technical effect underlies the new purpose claimed (Reasons 20).

Reasons for the Decision

Admissibility of the appeal

1. The admissibility of the appeal was challenged by the respondent based on an alleged failure of the statement of grounds of appeal to comply with Rule 99(2) EPC. For the reasons set out below, the Board concludes however that the requirements of Rule 99(2) EPC are met. The Board is also satisfied that all other requirements for the admissibility of the appeal have been met, noting that the respondent also did not raise any objections in that regard.

The appeal is thus admissible.

2. According to Rule 99(2) EPC the appellant shall indicate in the statement of grounds inter alia the reasons for setting aside the decision impugned.

T 2884/18 - Required level of substantiation

Key points

• The appeal of the opponent is inadmissible due to lack of substantiation of the Statement of grounds under Rule 99(2) EPC. The Statement of grounds was signed by a professional representative. 
• The opponent asserts that public prior use "  BMW E87" was proven, but does not address the conclusion of the OD that claim 1 was inventive over that prior use in view of the other cited documents.
• There is a further prior use "BMW F25". “Die Beschwerdeführerin [opponent] versäumt es nämlich, unter Punkt 4 der Beschwerdebegründung in Bezug auf die angebliche offenkundige Vorbenutzung BMW F25 im einzelnen zu zeigen, wo jedes der Merkmale von Anspruch 1 in der Zeichnung der Anlagen 2 und 25 offenbart sei, sondern bestreitet insoweit nur mit einem pauschalen Verweis auf diese Zeichnungen die Neuheit des gesamten Gegenstands von Anspruch 1.”
• According to the Board, it is not enough to merely argue that public prior use took place, the opponent must also substantiate how it anticipates the claim, even if the OD had only decided that in their view it was not proven that the public prior use took place. 
• “Um einen Mangel an Neuheit zu begründen, ist es i.d.R. notwendig, sich mit den einzelnen Merkmalen eines Anspruchs auseinanderzusetzen. Das bedeutet nicht, dass man sich immer mit allen einzelnen Anspruchsmerkmalen detailliert auseinandersetzen muss: insbesondere für Merkmale, die im Vorverfahren nie bestritten wurden, oder deren Verwirklichung im Stand der Technik eine reine Selbstverständlichkeit ist, kann eine detaillierte Begründung entfallen. Die Begründung muss jedoch ausreichen, um objektiv erkennen zu können, aus welchen Gründen alle beanspruchten Merkmale im Stand der Technik verwirklicht sein sollen. 
• Wie unten noch in Detail erläutert wird, ist im vorliegenden Fall der pauschale Verweis auf die Zeichnungen in der Beschwerdebegründung nicht ausreichend, um die diesbezügliche Argumentation der Beschwerdeführerin nachvollziehen zu können.”
• By analogy, if the OD decides to not admit an auxiliary request, the patentee should probably both specifically give reasons why the OD's decision on admissibility is wrong, and why the claims of the request are allowable.

EPO Headnote

Ein vollständiger Sachvortrag, wie ihn Artikel 108 EPÜ und Artikel 12 VOBK seit jeher verlangen, erfordert bei kumulativ aufeinander aufbauenden Argumentationslinien die Darlegung sämtlicher Tatsachen, die erst gemeinsam das behauptete rechtliche Ergebnis tragen (hier: Offenkundigkeit der Vorbenutzung und neuheitsschädliche Vorwegnahme aller Merkmale der Erfindung durch diese bei Beschwerde gegen die Einstufung einer Erfindung als neu im Sinne von Artikel 54 EPÜ).

Erst dann ist dargelegt, dass die Entscheidung aufgehoben werden sollte, vgl. T 922/05, Gründe Nr. 3 und 4, für den spiegelbildlichen Fall einer Beschwerde gegen eine Entscheidung, die mehrere alternative Gründe für die fehlende Patentfähigkeit einer Erfindung aufzählt.

Wird von mehreren kumulativ zur Änderung der Entscheidung darzulegenden Tatsachen nur eine ausreichend substantiiert, ist die Beschwerde unzulässig.

EPO T 2884/18 - link

Entscheidungsgründe

1. Die Beschwerde wird als unzulässig verworfen - Regel 101(1), Artikel 108, Satz 3 und Regel 99(2) EPÜ.

2. Nach Artikel 108, Satz 3 und Regel 99(2) EPÜ hat die Beschwerdeführerin in ihrer Beschwerdebegründung darzulegen, aus welchen Gründen die angefochtene Entscheidung aufzuheben oder in welchem Umfang sie abzuändern ist und auf welche Tatsachen und Beweismittel sie ihre Beschwerde stützt.

T 1533/15 - Lateness alone can be sufficient

Key points

• In this opposition appeal, Board 3.3.02 applies the RPBA 2007 to hold inadmissible two test reports filed by Patentee, as well a large number of auxiliary requests.
• However, the Board first discusses admissibility of the appeal of the patentee. The OD gave a very short statement in its decision why the feature that the composition is "for use in coating a food or beverage can" did not make the claimed subject-matter novel over D2.
• The Board: “the patentee's statement [in its Statement of grounds] made it clear why it thought the opposition division's reasoning was wrong. This is all the more true since in view of the extremely short statement given by the opposition division to explain its conclusion about lack of novelty of claim 20 as granted (2.2 supra), the patentee could have only speculated what the reasoning behind this conclusion was. The reasons provided by the patentee in its statement of grounds of appeal were therefore considered sufficient by the board to meet the requirements of Rule 99(2) EPC.”
• The Board considers that the feature does not make the claim novel over D5. In particular, the composition does not need to be suitable as coating for a can; the patent itself indicates that the coating may contain additional components besides the claimed composition.
  
  Test reports filed one month before oral proceedings Board
• The Board decided to not admit D23. “D32a-c were filed on 10 December 2019, i.e. only one month prior to oral proceedings. On the basis of these new items of evidence, the patentee alleged a new fact [], namely, that the surfactant AOT-75 as contained in the latex polymer of D5's example 18, would render this latex polymer unsuitable for coating food and beverage cans. Therefore, the patentee's submission amounted to a new allegation of fact, based on new evidence, late-filed in appeal proceedings. It thus represented an amendment of the patentee's case, which can only be admitted at the board's discretion pursuant to Article 13(1) and (3) RPBA 2007. [....] Moreover, the patentee did not dispute that D32a-c were already known to it on 9 August 2019. The patentee could give no reasons why it waited until one month prior to oral proceedings to file these documents.
• As a comment, for the admissibility of new evidence (as D23 is), it does not matter if this is a new allegation of fact (although evidence is of course used to support factual allegations). Article 114(2) EPC expressly states that that the EPO ‘may disregard [late-filed] facts or evidence’. The new allegation of fact is the argument based on the surfactant AOT-75. It seems useful to distinguish between the evidence and the alleged fact: factual allegations and supporting evidence are not always introduced simultaneously. 
• The Board also did not admit another test report D33. “The board considered that D33 did not represent a timely reaction to test report D23 filed by the opponent. In fact, D23 had been filed on 14 March 2016 with the opponent's response to the patentee's statement of grounds of appeal. The patentee thus waited almost four years before submitting D33 only one month prior to oral proceedings.”
  
  Cancelling independent granted claim one month before oral proceedings Board
• The Board had found that independent product claim 20 as granted was not novel. The patent as granted had also method claims 1 and 14. The Board does not admit the auxiliary requests wherein claim 20 is deleted, under ARt. 13(1) RPBA 2007.
• “As stated by the Enlarged Board of Appeal (R 16/09, reasons, 2.2.4), lateness alone can outbalance the further criteria mentioned in Article 13(1) RPBA 2007 and become decisive when exercising the discretion to admit or not, inter alia, late-filed claim requests (R 16/09, reasons, 2.2.12; see also T 0253/10, reasons, 2.3). Hence, the very fact that auxiliary requests 1, 1A, 2A, 2C and 3A to 14A have been filed extremely late in the present appeal proceedings was sufficient reason alone not to admit these requests.”
• Before the OD and with the SoG, patentee had filed AR's wherein claims 1 and 14 were amended. “This led the opponent and the board to believe that those requests contained all the amendments the patentee considered to be necessary”
• “This belief was reinforced by the fact that until one month prior to oral proceedings before the board, the patentee never manifested any intention to go in a different direction, namely, to delete granted claim 20 while leaving claims 1 and/or 14 unamended”
• “This change of direction was further aggravated by the fact that the newly filed auxiliary requests were not convergent.”
• “The opponent (and the board) was thus confronted with a target that was moved almost at the end of the appeal proceedings. This implied high complexity both in procedural and technical terms which was a further reason for not admitting auxiliary requests 1, 1A, 2A, 2C and 3A to 14A into the proceedings.”
• “Moreover, the notice of opposition (page 11, point 2.16.2) already contained the opponent's novelty objection against granted claim 20 in view of D5's example 18. This objection was accepted by the opposition division, which also found the subject-matter of claim 20 to be not novel over said example 18. Consequently, the patentee could and should have filed auxiliary requests 1 and 1A already before the department of first instance. This was even more true when considering that during oral proceedings before the opposition division, the patentee was informed (minutes of oral proceedings before the opposition division, page 1, point 2, last paragraph) that remaining independent claims, i.e. inter alia claims 1 and 14, were found to be novel by the opposition division. At that point in time, the patentee could and should have filed requests not containing claim 20 anymore.”

EPO T 1533/15 - link

Reasons for the Decision

Applicable Rules of Procedure of the Boards of appeal

1. On 1 January 2020, the previously applicable Rules of Procedure of the Boards of appeal were replaced by new Rules of Procedure. The present decision has been issued after the new Rules of Procedure entered into force.

1.1 Hereinafter, the requirement that the statement of grounds of appeal and the reply thereto should contain the party's complete case will be addressed. This requirement is present in Article 12(2) of the previous Rules of Procedure (hereinafter Article 12(2) RPBA 2007) and Article 12(3) of the new Rules of Procedure (hereinafter Article 12(3) RPBA 2020) and is expressed with a substantially identical wording. According to Article 25(1) of the transitional provisions of the new Rules of Procedure, for any appeal pending on the date of entry into force like the present one, the new Rules of Procedure shall apply subject to certain exceptions dealt with in paragraph 25(2) and (3) RPBA 2020. Article 12(3) RPBA 2020 is not among those exceptions. Hence, Article 12(3) RPBA 2020 rather than Article 12(2) RPBA 2007 applies and will be referred to in the following.

1.2 In subsequent sections of the present decision, admittance of several submissions under the Rules of Procedure will be discussed, with these submissions having been filed after the summons to oral proceedings had been issued and before the entry into force of the new Rules of Procedure. For such a situation, Article 25(3) of the transitional provisions of the new Rules of Procedure applies. According to this provision, Article 13(2) of the new Rules of Procedure shall not apply and instead Article 13 of the previous Rules of Procedure shall continue to apply. This means that at least Article 13(1) and (3) of the previous Rules of Procedure (hereinafter Article 13(1) and (3) RPBA 2007) applies and will be relied upon by the board in the following sections addressing admittance.

T 2132/14 - Not addressing all grounds

Key points

• The Board holds this examination appeal inadmissible because not all the grounds for refusal were addressed in the Statement of Grounds. The appellant did address the objections of lack of novelty and inventive step, especially for claim 1. However, "the examining division found inter alia that claims 7 and 19 [contravened Art.123(2)]" (r.II).
• "The board further observes that the independent claim 15 of the set of claims filed with the statement of grounds of appeal, which substantially corresponds to former claim 7, still comprises the feature which had been objected to [...] in unamended form. No comments were provided by the appellant in this regard either. The board concludes that the appellant did not address the corresponding ground for refusal under Article 123(2) EPC, either implicitly by filing amendments, or explicitly by filing comments on this point."
• "The board further notes that the conditions under Rule 99(2) EPC, i.e. an adequate statement of grounds of appeal, must be satisfied within the time limit for filing the statement of grounds of appeal laid down in the third sentence of Article 108 EPC so that deficiencies in this respect cannot be overcome by filing a new set of claims one day prior to the oral proceedings."

T 2132/14 - link

Reasons for the Decision

1. Admissibility of the appeal (Article 108 and Rule 99(2) EPC)

1.1 The appeal is not admissible, since the conditions for an adequate statement of grounds of appeal are not fulfilled. From the third sentence of Article 108 EPC in conjunction with Rule 99(2) EPC it follows that the statement of grounds of appeal must state the grounds on which the decision is to be set aside. Accordingly, it is settled case law of the Boards of Appeal that a statement of grounds must address all the main reasons given for the decision under appeal (see Case Law of the Boards of Appeal, 8th Edition 2016, IV.E. 2.6.3.b)).

1.2 In the reasoning of the decision under appeal, the examining division concluded that the subject-matter of claims 7 and 19 of the main request, on which the main request filed with the statement of grounds of appeal was substantially based, did not seem to meet the requirements of Article 123(2) EPC (see point 1.5 of the reasons for the decision under appeal). This must therefore be interpreted as being one of the main grounds on which the application was refused.

1.3 The appellant did not address this ground for refusal under Article 123(2) EPC in the statement of grounds of appeal at all. Claim 31 of the set of claims filed with the statement of grounds of appeal, which is based on the former claim 19 which had been objected to, has indeed been amended. The appellant however did not provide any comment as to why the amendments should be considered to be suitable to overcome the examining division's objections with respect to Article 123(2) EPC. The mere filing of an amended claim without any comment cannot be considered as a sufficient reasoning that would establish compliance of the statement of grounds of appeal with Article 108 EPC (see Case Law of the Boards of Appeal, 8th Edition 2016, IV.E.2.6.5.b)).

T 2313/15 - Only arguments before OD

Key points

• In this opposition appeal, the patentee did not submit auxiliary requests before the OD and did not request oral proceedings. The OD revoked the patent only on the ground of lack of novelty of one claim over D2, without holding oral proceedings. In appeal, the patentee defends that the claims as granted are novel over D2, and also over D1 and D3, with success. The Board considers the claims as granted novel and remits the case. The opponent appears overall unhappy with the procedural course of action. The opponent challenges admissibility of the appeal,  protests against the remittal, and requests an apportionment of costs.
• As to admissibility, the Board: "In a case such as the present one, where the appeal lies against a decision based on a sole ground (lack of novelty) a statement of grounds is sufficiently substantiated in the sense of Rule 99(2) EPC if it addresses that sole ground in a manner for the Board and the other party to understand why the Appellant considers the decision to be incorrect." "The Respondent-Opponent has rather argued that the Appellant [patentee] in their statement of grounds should have dealt with all grounds raised in opposition. This view however has neither a basis in the Convention nor is it supported by jurisprudence."
• As to the remittal: "The Respondent-Opponent requests the Board to make a final decision rather than remit the case to the Opposition Division." "In the present case all grounds of opposition under Article 100 EPC had been raised against all of the claims of the patent, based on various citations. The Opposition Division, however, issued its decision immediately, without oral proceedings, based only on the single ground of lack of novelty of claim 15 over a single document [D2, see r.3]. " 
• " In the light of the above, the Board considers that having a final decision without remittal would largely exceed the primary function of the appeal proceedings as judicial review of a first instance decision to such an extent that outweighs, in the present case, the public interest for procedural economy and the legitimate wish of the Respondent-Opponent to have such decision made by the Board." 
• As to the request for apportionment of costs (i.e. that the patentee pays the costs to be made by the opponent in the future second proceedings before the OD): the Board sees no ground.
• The fact that patentee dealt with all of opponents attacks before the OD " only by argument, without submitting auxiliary requests and without requesting oral proceedings, is a legitimate defence against an opposition, though it runs the calculated risk of an immediate contrary decision." 

• " Thus, the Appellant-Proprietor had no particular obligation to request oral proceedings before the Opposition Division. Their right to appeal or to file further requests on appeal is not affected by the mere fact that they did not request oral proceedings [before the OD]. The Board fails to see any legal basis for the implied assertion of the Respondent that the rights of the Appellant-Proprietor in the appeal proceedings are somehow more restricted because they did not request oral proceedings." 

EPO T 2313/15 -  link

Reasons for the Decision

1. Admissibility of the appeal

1.1 The Respondent-Opponent objects that the statement of grounds only addresses novelty of claim 15 and is therefore not a complete case in the sense of Article 12(2) RPBA. On this ground the appeal is, according to the Respondent, inadmissible.

1.2 Concerning the disputed aspect of the admissibility, the extent of the required reasoning and sufficient substantiation, this is governed by Article 108 and Rule 99(2) EPC. The examination of the question whether the requirements of Article 108 EPC, third sentence in combination with Rule 99(2) EPC are met is made on the basis of the contents of both the statement of grounds of appeal and of the decision under appeal, T 162/97, see Case Law of the Boards of Appeal, 2016, 8th. edition (CLBA), IV.E.2.6.3. In a case such as the present one, where the appeal lies against a decision based on a sole ground (lack of novelty) a statement of grounds is sufficiently substantiated in the sense of Rule 99(2) EPC if it addresses that sole ground in a manner for the Board and the other party to understand why the Appellant considers the decision to be incorrect. That the present statement of grounds addresses the sole ground for revocation, and in sufficient detail, is undoubtedly the case. Nor has it been argued that this would not be so.

1.3 The Respondent-Opponent has rather argued that the Appellant in their statement of grounds should have dealt with all grounds raised in opposition. This view however has neither a basis in the Convention nor is it supported by jurisprudence. Neither of the two decisions cited by the Respondent is indeed concerned with the question of admissibility of an appeal. T 396/98 deals with the issue of the extent to which an opposition division's decision is binding on the corresponding appeal board, see Reasons, point 2 - i.e. whether the board can also review findings of the opposition division that were in favour of the appellant party-, which is not related to the question of admissibility of the appeal. T 240/04, on the other hand concerns the question of admittance of an auxiliary request, see Reasons points 16.1-16.3.

1.4 As otherwise all formal requirements of Article 108 and Rule 99 EPC are met, the Board concludes that the appeal is admissible.

T 1304/18 - Not addressing the clarity objection

Key points

• The Board holds this appeal against a refusal of a patent application inadmissible because the applicant did not properly address the ground of lack of clarity in his Statement of grounds (drafted by in-house counsel of an industrial company). The applicant had only submitted that the features were also used in the corresponding granted US patent.
• " Der bloße Hinweis auf Ansprüche eines US-Patents, in denen die wesentlichen Merkmale bereits genannt sein sollen, ist nicht geeignet, um darzulegen, warum die in der angefochtenen Entscheidung genannten Einwände inkorrekt sein sollen und auf welche Tatsachen die Behauptung der Beschwerdeführerin gestützt ist. Ohne eigene Ermittlungen ist für die Kammer zum Beispiel nicht erkennbar, um welche "wesentlichen Merkmale" des ursprünglich eingereichten Anspruchs 1 der hier zu behandelnden Europäischen Patentanmeldung es sich dabei handeln könnte. Eine objektive Überprüfung des Beschwerdevorbringens auf seine Richtigkeit hin ist daher nicht möglich." 
• The auxiliary requests do not make the appeal admissible either, because the objection was based on the claim failing to specify process conditions whereas in the auxiliary requests only feature concerning the device were added to claim 1.

EPO T 1304/18 - link

Entscheidungsgründe

1. Artikel 108 Satz 3 EPÜ erfordert, dass innerhalb von vier Monaten nach Zustellung der Entscheidung die Beschwerde nach Maßgabe der Ausführungsordnung zu begründen ist. Regel 99 (2) EPÜ führt dazu aus, dass in der Beschwerdebegründung vom Beschwerdeführer darzulegen ist, aus welchen Gründen die angefochtene Entscheidung aufzuheben oder in welchem Umfang sie abzuändern ist und auf welche Tatsachen und Beweismittel er seine Beschwerde stützt.

2. Um diesen Anforderungen zu entsprechen, muss nach der gefestigten Rechtsprechung der Kammern die Beschwerdeführerin in der Beschwerdebegründung darlegen, aus welchen rechtlichen oder tatsächlichen Gründen die angefochtene Entscheidung aufgehoben werden soll. Damit soll sichergestellt werden, dass eine objektive Überprüfung des Beschwerdevorbringens auf seine Richtigkeit hin möglich ist, ohne dass die Kammer dabei eigene Ermittlungen durchführen muss (siehe z.B. T 220/83, Abl. EPA 1986, 249, Punkt 4 der Entscheidungsgründe; J 10/11, nicht veröffentlicht, Punkt 2.1 der Entscheidungsgründe und die dort zitierte Rechtsprechung).

Ob die Anforderungen des Artikels 108 Satz 3 in Verbindung mit Regel 99 (2) EPÜ erfüllt sind, muss anhand der Beschwerdebegründung und der Gründe in der angefochtenen Entscheidung entschieden werden. Die Anforderungen an die Zulässigkeit können ausnahmsweise als erfüllt gelten, wenn bei Durchsicht der angefochtenen Entscheidung und der Begründung sofort zu erkennen ist, dass die Entscheidung aufgehoben werden soll. (J 10/11, ibid.).

3. Im vorliegenden Fall hat die Prüfungsabteilung die Klarheit eines Merkmals im Anspruch 1 bemängelt und ihren Einwand damit begründet, dass dieses Merkmal nur ein zu erreichendes Ergebnis darstellt, welches die der Patentanmeldung zugrundeliegende Aufgabe angebe, ohne dass die dafür notwendigen Merkmale angegeben seien, entgegen den in den Richtlinien F-IV 4.10 ausgeführten Grundsätzen.

T 1904/14 - Not addressing all grounds for refusal

Key points

• In this examination appeal, the application was refused for lack of novelty, inventive step, and lack of clarity. The applicant (a large industrial company) did not comment on clarity in the Statement of grounds, only on novelty and (in detail) on inventive step. 
• The Board finds that the appeal is inadmissible under Rule 99(2) EPC. The arguments in favor of clarity filed later in the appeal procedure do not help. The assertion of a substantial procedural violation (also only submitted later in the appeal procedure) neither helps. 
• The Board: "Einen Widerspruch in der Begründung der angefochtenen Entscheidung hat die Beschwerdeführerin vielmehr erst in Reaktion auf die vorläufige Meinung der Kammer mit ihrem am 23. Mai 2019 eingegangenen Schreiben gerügt. Die Zulässigkeitsvoraussetzung gemäß Regel 99 (2) EPÜ, das heißt eine hinreichende Beschwerdebegründung, muss jedoch innerhalb der nach Artikel 108 Satz 3 EPÜ vorgesehenen Frist für die Einreichung der Beschwerdebegründung erfüllt sein und kann nicht durch einen verspäteten Vortrag nachträglich geheilt werden."
• There were also no auxiliary requests implicitly addressing the clarity issue.
• I note that oral proceedings took place before the Board, from 13:00 to 13:45.

EPO T 1904/14 - link

Entscheidungsgründe

Zulässigkeit der Beschwerde

1. Aus Artikel 108 Satz 3 EPÜ in Verbindung mit Regel 99 (2) EPÜ ergibt sich, dass in der Beschwerdebegründung anzugeben ist, aus welchen Gründen die Entscheidung aufzuheben ist. Es ist dementsprechend ständige Rechtsprechung der Beschwerdekammern, dass sich eine für die Zulässigkeit einer Beschwerde ausreichende Begründung mit allen tragenden Gründen der angefochtenen Entscheidung auseinandersetzen muss (siehe Rechtsprechung der Beschwerdekammern, 8. Auflage 2016, IV.E.2.6.3.b)). Dies gilt auch dann, wenn die Begründung in der angefochtenen Entscheidung falsch oder widersprüchlich ist.

2. In der angefochtenen Entscheidung war die Prüfungsabteilung zu dem Schluss gelangt, dass der Gegenstand des Anspruchs 1 des damaligen Hilfsantrags 1, der identisch mit dem jetzigen Hauptantrag ist, nicht klar im Sinne von Artikel 84 EPÜ sei (siehe die Entscheidungsgründe der angefochtenen Entscheidung unter Punkt 2.2 in Verbindung mit Punkt 1.3).

T 1979/13 - Not addressing all grounds in appeal

Key points

• In this opposition appeal, the OD had found claim 1 of the Main Request to lack basis in the application as filed. The patentee addresses only Article 123(3) and Rule 80  in the Statement of grounds filed on 30.11.2013.
• Therefore, the Statement of grounds does not comply with Rule 99(2).
  
  
• "  Weder in der Beschwerdeschrift noch in der Beschwerdebegründung findet sich ein einziges Wort, das auf den Einwand der Einspruchsabteilung unter Artikel 123 (2) EPÜ eingeht. Die von der Beschwerdeführerin angeführten Textstellen der Beschwerdebegründung auf Seite 1 unten sowie Seite 2 beziehen sich ausschließlich auf die Punkte II.2 sowie II.3 der angefochtenen Entscheidung." (Point II.2 was about Rule 80, point II.3 about Article 123(3). edit 20.10.2020
• " Es ist für die Kammer daher nicht nachvollziehbar, warum eine wie auch immer geartete Argumentation zu Punkten der angefochtenen Entscheidung, durch welche die Beschwerdeführerin nicht beschwert ist, einen Grund dafür darstellen sollte, warum die angefochtene Entscheidung aufzuheben ist." 
• This decision is perhaps not very surprising. Note however that the Board needed almost six years to decide the case. 

EPO T 1979/13 - link

Entscheidungsgründe

1. Unzulässigkeit der Beschwerde (Regel 101 (1) EPÜ)

1.1 Die Beschwerde wurde fristgerecht eingereicht. Jedoch ist die Kammer zu der Auffassung gelangt, dass die Beschwerde im Sinne der Regel 99 (2) EPÜ nicht ausreichend begründet ist.

Das Patent war von der Einspruchsabteilung widerrufen worden, da der unabhängige Anspruch 1 des einzigen der angefochtenen Entscheidung zugrundeliegenden Antrags, der dem gültigen Hauptantrag entspricht, gegen Artikel 123 (2) EPÜ verstößt.

T 2556/16 - Inadmissible appeal

Key points

• The Board rejects the appeal of the opponent as inadmissible because it is not sufficiently substantiated under Rule 99(2) EPC, in particular for the finding of the OD that claim 1 was novel.
•  " In the statement of grounds of appeal, the appellant-opponent did not challenge the legal basis given in the appealed decision, nor did it provide any evidence based arguments relating to the common general knowledge of the skilled person, which could serve as a basis for overturning the Opposition Division's decision on this point. This would have been even more important as the Opposition Division explicitly held that the opponent had not provided, "...convincing corresponding evidence, i.e. basic textbooks, representing common general knowledge and disclosing features p and q in combination" 
• " The Board is rather faced with a bald, unsupported statement from the appellant-opponent, ("Eine entsprechende Anordnung gehört jedoch zum allgemeinen Grundwissen des Fachmannes ...".). Such a statement does not go beyond merely stating that the Opposition Division was incorrect". The Board refers to T 395/12; T 1581/08 and T 213/85." 

EPO T 2556/16 -  link

Summary of Facts and Submissions

I. The appeal of the appellant-opponent lies against the decision of the Opposition Division to reject its opposition against European patent No. 2 442 968.

II. The Opposition Division found that the patent as granted satisfied the requirements of sufficiency, novelty and inventive step (that is the heads of opposition under Articles 100(a) and (b) EPC were considered).

III. During the discussion of novelty under Article 100(a) EPC a key issue was whether document D1, read in the light of the common general knowledge of the skilled person, disclosed features "p)" and "q)" - see point 2.3.1 of the Opposition Division decision. The Opposition Division thought not. In particular, the Opposition Division found that the opponent had not provided, "...convincing corresponding evidence, i.e. basic textbooks, representing common general knowledge and disclosing features p and q in combination". This was also an issue in the discussion of inventive step.

IV. The Opposition Division further found that the generic disclosure of an "end switch" in document D1 did not take away the novelty of the more specific combination of features, "p)" and "q)" - see last paragraph, point 2.3.1 of the Opposition Division decision.

V. In its written statement of grounds of appeal, the appellant-opponent merely repeated its argument that features p and q were disclosed in document D1 in combination with the common general knowledge of the skilled person. No evidence on this common general knowledge, the absence of which had been a decisive issue before the Opposition Division, was provided by the appellant-opponent. Finally, the appellant-opponent referred to its written submissions in the proceedings before the Opposition Division.

VI. The respondent-patent proprietor replied to the statement of grounds of appeal in substance and requested the dismissal of the appeal.

VII. With communication dated 31 July 2018 pursuant to Rule 100(2) EPC the Board set out its preliminary opinion according to which the appeal appeared to be found inadmissible (Rule 101(1) EPC). The appellant-opponent did not file a response to this communication.

VIII. The appellant-opponent requested, that the patent be revoked.

Oral proceedings were not requested.

Reasons for the Decision

Remark

Since oral proceedings were not requested by the appellant-opponent the Board was in the position to take a final decision without arranging for oral proceedings.

T 0501/15 - Addressing all grounds

Key points

• In this opposition appeal, the Board decides that proprietor's appeal is admissible. The patentee with the Statement of grounds no longer defends the main request but only the auxiliary requests. 
• "These requests were held in the [OD's] decision to contravene the provisions of Article 123(2) and/or 84 EPC. For these requests the decision is silent regarding novelty and sufficiency of disclosure. Nor is the Board able to infer in some way or another from the decision, what the division's view might have been for these issues for these requests."
• Therefore, it was sufficient to defend in the Statement of grounds that these requests meet Article 123(2) and 84 EPC. 
" Consequently, the statement of grounds formally addresses all the grounds upon which the rejection of these requests, which are maintained upon appeal, is based. For this reason the respondent's opinion that the grounds fail to give arguments in support of novelty or sufficiency for these requests is not relevant for the question of admissibility.
• The Board considers decision T1045/02 to be different because in that case, the (Form 2061) refusal effectively included a rejection for lack of novelty of claim 2 which was defended in appeal.
• " In the present case the principal request is the unamended auxiliary request 1, which the decision under appeal considered not allowable solely on the grounds of added matter and lack of clarity; both issues are addressed in detail in the statement of grounds." 
• The Board adds that:  "Case law thus suggests a case-by-case approach that considers the contents of the statement of grounds and the decision under appeal, but is otherwise not prescriptive as to particular principles that must apply when considering individual cases." I'm not sure how accurate this is. I think that case law holds that a Statement of ground must rebut all grounds for rejecting the request (or attack of opponent) at issue. 

EPO T 0501/15 -  link

Reasons for the Decision

1. Admissibility of the appeal

1.1 The admissibility of the proprietor-appellant's appeal is contested, because according to the respondent it would fail to address the grounds of novelty and sufficiency that were part of the impugned decision.

1.2 The decision indeed concludes that the main request is not allowable on the grounds of novelty and sufficiency. However, the appellant does not pursue the main request but rather the auxiliary requests 1 to 6, which have been re-filed together with a further new auxiliary request 7 with the statement of grounds. These requests were held in the decision to contravene the provisions of Article 123(2) and/or 84 EPC. For these requests the decision is silent regarding novelty and sufficiency of disclosure. Nor is the Board able to infer in some way or another from the decision, what the division's view might have been for these issues for these requests.

The grounds of appeal contain, in relation to each of the above auxiliary requests, arguments relating to the reason that lead the opposition division to hold that request not allowable (see e.g. page 2, reasons for compliance of the first auxiliary request with Art. 84 and 123(2) EPC, and on page 3 the issue of added subject-matter against the amended first auxiliary request). Consequently, the statement of grounds formally addresses all the grounds upon which the rejection of these requests, which are maintained upon appeal, is based. For this reason the respondent's opinion that the grounds fail to give arguments in support of novelty or sufficiency for these requests is not relevant for the question of admissibility.

1.3 The respondent furthermore refers to the case law and in particular to the decision T 1045/02 to support his view that the statement of grounds failed to meet the minimum requirements in that it dealt with only one of several grounds. The decision is quoted in the passage of the case law explaining the general principles that the examination of whether the requirements of Art. 108, third sentence, EPC are met, has to be made on the basis of the contents of both the statement of grounds of appeal and of the decision under appeal, and that whether a statement of grounds meets the requirements of Article 108 and Rule 99(2) EPC 1973 can only be decided on a case-by-case basis (Case Law of the Boards of Appeal, 8th edition 2016 (CLBA) IV.E.2.6.3, in particular that the statement of grounds are to be analysed vis-à-vis reasons in the decision (CLBA IV.E.2.6.3 b)).

1.4 Case law thus suggests a case-by-case approach that considers the contents of the statement of grounds and the decision under appeal, but is otherwise not prescriptive as to particular principles that must apply when considering individual cases. Indeed T 1045/02 itself refers to these principles, see 1. of the Reasons. In the present case the Board has applied the general principle and considered both the statement of grounds and decision under appeal and found that, for the relevant requests of the present appeal, the impugned decision considered only added subject-matter and clarity, and that both issues are addressed in the statement of grounds. Both issues are moreover addressed to a degree that requires little or no effort on the part of the Board or the other party to understand why the appellant considers that the decision is wrong in its findings on these issues, nor indeed has this been argued.

1.5 In addition, the Board does not find the case considered in T1045/02 cited by the respondent to be sufficiently analogous to the present case. That case concerned an appeal against a decision by the examining division according to the state of the file where not the decision itself but the relevant communications contained the novelty and clarity objections. There, for amended claims of a main request filed in appeal the statement of grounds of appeal only addressed lack of clarity. However, the file itself contained an indication from the examining division that importing the subject-matter of claim 2 would not make claim 1 novel, see 3. of the Reasons in T 1045/02. In other words, the decision was seen as containing reasons on the issue of novelty for a relevant claim. In the present case the principal request is the unamended auxiliary request 1, which the decision under appeal considered not allowable solely on the grounds of added matter and lack of clarity; both issues are addressed in detail in the statement of grounds.

1.6 The Board thus concludes that the appeal is admissible pursuant Article 108, third sentence, and Rule 99(2) EPC.

T 0198/15 - Opponent's appeal inadmissible

Key points

• The appeal of opponent is rejected as inadmissible.
• The opponents Statement of grounds consists essentially of 1) Word for word repetitions of the notice of opposition, and of the opponent's written submissions before the OD, and 2) new novelty attacks based on documents D6 and D9, which did not form part of the proceedings before the opposition division.

• " It may well be that the appellant [opponent] does not agree with the decision. However, a mere re-run of the opposition before the Board which does not include the reasons for setting aside the impugned decision (Rule 99(2) EPC) - albeit with the additional issue of the admission of new documents - is not compatible with the main purpose of the opposition appeal proceedings, which is to give the losing party a possibility to challenge the decision of the opposition division on its merits (G 9/91, OJ 1993, 408, Reasons 18). Therefore, the appeal is inadmissible." 
• It seems unfair to me that a patentee can base the appeal solely on amended claims (and does not need to defend the claims as rejected by the OD at all), see T 1668/14, in order to have an admissible appeal, while the opponent must defend its attacks rejected by the OD. In T 1168/14, it was stated that "it is not an absolute requirement for admissibility that the appellant should attack the opposition division's decision as flawed." It seems that this applies only for patentees as appellants, or at least not for opponents in view of this decision T 198/15. 

EPO T 0198/15 -  link

Reasons for the Decision

2. Admissibility of the appeal

2.1 In the present case, the admissibility of the appeal depends on whether the statement of grounds of appeal complies with Article 108, third sentence, EPC in conjunction with Rule 99(2) EPC. According to these provisions, in the statement setting out the grounds of appeal the appellant shall indicate "the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based."

2.2 The statement setting out the grounds of appeal must enable the Board to understand immediately why the decision under appeal is alleged to be incorrect and on which facts the appellant bases their arguments, without having to make investigations of its own (see J 10/11, Reasons 2.1 with reference to several decisions).