T 1287/18 - Devolutive effect of appeal

Key points

• The Board gives first a useful summary of the relationship between the principle of party disposition, the extent of appeal, and the devolution effect of appeal. 
• The Board: “In accordance with the principle of party disposition [...] the power of a board to decide a certain matter depends on the extent of the appeal and covers only that part of the impugned decision which is indicated in the statement of grounds as actually challenged by the appeal. The extent of an appeal is simultaneously the limit of the devolutive effect, the latter indicating that the first instance loses its competence for the further prosecution of the matter”
• Now the difficulty is, what do we mean with “that part of the impugned decision which is indicated in the statement of grounds as actually challenged by the appeal”?
• In the following paragraph of the present decision, the Board suggest that a “part” may refer to a part of the reasons. I'm not sure if that is the correct approach. 
• “In the present case, the decision has been appealed [by the opponent] in respect of novelty with regard to the finding of the opposition division that novelty over D1 was given ("extent of the appeal"). The opposition division found that the criteria for selection inventions apply and that the range 5-14 wt% of an ethylene/1-butene elastomer of claim 1 of auxiliary request V met those criteria. This finding has been impugned by the appellant [opponent] on the argument that the criteria for selection invention were not met. Since the Board was of the opinion that the opposition division did not apply the correct criteria for assessing novelty, it was within its power to mention it and to indicate which criteria should be applied.”
•  “Contrary to the appellant's [opponent's] argument, the Board in doing so is not carrying out a general review (de novo) of the first instance decision, regardless of what has been sought by the parties, in contrast to the teaching of G 8/91 (point 10.2 of the reasons). Indeed, considering that the appellant sought the review of the first instance decision to the extent that novelty over D1 was given, the Board has the power to review that part of the decision in full without any limitation. This is also in line with the primary object of the appeal proceedings to review the decision under appeal in a judicial manner (as now explicitly stated in Article 12(2) RPBA 2020), in the sense that they primarily serve to verify the correctness of the result of the decision under appeal, i.e. the legal effect of that decision.”
• G 8/91 is about withdrawal of appeals (finding that the appeal proceedings are immediately terminated if the sole appellant withdraws the appeal) and the cited paragraph 10.2 reads, in part: “As a matter of general principle, it is not the function of the Boards of Appeal to carry out a general review of decisions at first instance, regardless of whether such a review has been sought by the parties. On the contrary, the Boards' function is to consider appeals that are admissible and pending.”
• Returning to the question, what is the “extent of appeal”, it must be borne in mind that parties may not appeal if reasons are unfavourable. E.g. if the patent is revoked as novel but not inventive, the opponent may not appeal (and cross-appeal, i.e. an appeal in reply to an appeal by patentee is not possible); accordingly clearly the patentee can not limit the extent of appeal to the issue of inventive step only. In other words, the patentee appeals the decision to revoke in full. If there is a 2nd ancillary decision in the order of the first instance department (e.g. an apportionment of costs under Art. 104), the appellant can limit the appeal to one of the decisions in the order, see T 420/03. 
• Admittedly, in T 233/93 held that: “As appellant I [opponent] only objected to those parts of the impugned decision which relate to product claims the Board is not authorised to question the patentability of the process claims.”
• Turning to the present case, in my view, the appeal of the opponent is simply directed to the decision as specified in the order, that taking into account the amendments made by the patent proprietor, the patent and the invention to which it relates are found to meet the requirements of the EPC. 
• The Board writes that: “This is also in line with the primary object of the appeal proceedings to review the decision under appeal in a judicial manner (as now explicitly stated in Article 12(2) RPBA 2020), in the sense that they primarily serve to verify the correctness of the result of the decision under appeal, i.e. the legal effect of that decision.”
• As a comment, this touches on the key question: is the purpose of appeal proceedings to verify the correctness of the result of the decision of the appeal, or of the reasons for the decision under appeal? Note, that the first alternative would imply that new attacks in appeal should be considered: if the new attack prejudices the result of the impugned decision, e.g. the patent is maintained as granted, then the Board should consider any attack that can prejudice that result. 

EPO - T 1287/18

Link to the decision after the jump, as well as an extract of the decision text.

T 1609/20 - The covid extension for renewal fees

 Key points

• There is more in this decision than meets the eye.
• “During the appeal proceedings the European Patent Office issued a noting of loss of rights pursuant to Rule 112(1) EPC stating that the renewal fee for the eleventh year and the additional fee have not been paid in due time. The applicant / appellant requested to confirm that the renewal fee for the eleventh year and the additional fee were paid in due time.”
• “According to Rule 112(2) EPC if the party concerned considers that the finding of the European Patent Office is inaccurate, it may, within two months of the communication under Rule 112(1) EPC, apply for a decision on the matter. The European Patent Office shall take such decision only if it does not share the opinion of the party requesting it; otherwise, it shall inform that party. In this case the Board shares its opinion.”
• First of all, the Notice of loss of rights of 18.11.2020 was issued “for the Examining Division” and the appellant expressed surprise to receive a preliminary opinion of the Board on the matter.
• The Board is competent to decide on all matters pertaining to the application during the appeal, the so-called devolutive effect of appeal, and hence also on the renewal fee. However, the EPO's computer systems sending out the Notice of loss of rights are not programmed accordingly. 
• The appellant argued that all periods were extended until 2 June under the covid measures (OJ 2020 A60) and that the 6 month period for paying the renewal fee with surcharge, therefore, expired on 2 December 2020. OJ 2020 A75 was also cited.
• The Board's preliminary opinion was entirely negative: the deferred due date for the renewal fee did not change the start or end of the 6-month period for paying with surcharge, in line with J 4/91, and no legitimate expectations either.
• Because the present decision is empty of substantive reasons, we don't know why the Board changed its mind. I note that the EPO had sent out the Notice of loss of rights in a number of parallel applications of the same applicant, at least (p.1 of this letter) so presumably it was the EPO's position that the period for payment with surcharge was not postponed. But the present Board apparently prefers to not explain what happened and why the EPO's position was wrong. 
• Either J 4/91 is abandoned in the present decision (and an extension under Rule 134(2) does shift the due date / starting date for the 6-month period even if the extension is very long), or the EPO's Covid-related notices are not completely legally sound (see J10/20) and there is some hand waving under Article 125 EPC in the present decision, but the present decision obscures the Board's precise reasoning. 
• Typically high quality judgments are characterized by their clear reasoning, not by obscuring the legal reasoning.

T 1609/20

https://www.epo.org/law-practice/case-law-appeals/recent/t201609eu1.html

Summary of Facts and Submissions

During the appeal proceedings the European Patent Office issued a noting of loss of rights pursuant to Rule 112(1) EPC stating that the renewal fee for the eleventh year and the additional fee have not been paid in due time.

The applicant / appellant requested to confirm that the renewal fee for the eleventh year and the additional fee were paid in due time.

As a auxiliary measure it requested re-establishment in the time-limit to pay these fees and paid the fee for re-establishment. Finally it requested that fee for re-establishment be reimbursed if the renewal fee and the additional fee were considered to be paid in due time.

Reasons for the Decision

According to Rule 112(2) EPC if the party concerned considers that the finding of the European Patent Office is inaccurate, it may, within two months of the communication under Rule 112(1) EPC, apply for a decision on the matter. The European Patent Office shall take such decision only if it does not share the opinion of the party requesting it; otherwise, it shall inform that party. In this case the Board shares its opinion.

Since a decision on re-establishment was not to be taken, the fee for re-establishment has to be reimbursed.

Order

For these reasons it is decided that:

1. The appellant is informed that the renewal fee

for the eleventh year and the additional fee were

paid in due time.

2. The fee for re-establishment is reimbursed.

T 1426/14 - RE refused, renewal fee refunded

Key points

• The applicant had failed to pay the renewal fee with surcharge during his appeal against the refusal of the application. He requests re-establishment. The Board refuses the request due to lack of due care. As part of the RE request, the omitted act was completed as prescribed and hence the renewal fee with surchare was paid.
• The Board orders the refund of the renewal fee at issue (including the surcharge). 
• “Therefore [...]  the request for re-establishment of rights has to be refused. This means that the loss of rights communicated on 7 February 2019 has become final and the application is deemed to be withdrawn. Since the renewal fee for the 9**(th) year and the additional fee were paid after the loss of rights occurred, they were paid without legal basis and therefore have to be reimbursed.”
• As a comment, Rule 136(2) EPC prescribes that the renewal fee must be paid as part of the omitted act. Still, in line with G 1/18, it is correct to say that the renewal fee was “paid without legal basis” and is reimbursed.
• The Board is competent to decide on the RE request, instead of the examining division.
• “The noting of loss of rights was issued by the formalities officer on behalf of the examining division. At that time, however, the appeal proceedings were pending. Thus the loss of rights resulting from the failure to pay the renewal fees occurred in the course of the appeal proceedings. Given that with the commencement of the appeal proceedings, the competence to decide on the case has moved from the department of first instance to the Boards of Appeal [], the Board is competent to decide on the request for re-establishment of rights [].” This illustrates the devolutive effect of appeal.
• The order on the main appeal is that " The appeal proceedings are terminated"
• The renewal fees paid during the main appeal in the period 2014-2018 are not refunded (the file does not indicate such a refund, 09.11.2020) even though the Examining Division's refusal decision in 2014 is now final. 

About due care  for renewal fees and clients using payment service companies

• In case the applicant uses a payment service company and the European professional representative is instructed to pay no renewal fees: “However, in the present case, the representative was informed about the applicant's intentions and he could be sure that the applicant was aware of the running time limit. Once the applicant had clearly indicated that he had taken note and that he would pay, the representative had fulfilled his obligations and the responsibility shifted to the applicant.”
• “ All due care of an applicant in such a situation requires that he carefully studies the letters he receives from his consultants and gives the required instructions in good time.”
• “The Board does not concur with this view because that mistake [of the applicant] could have been avoided if the applicant had properly read the correspondence sent to him by his consultants [letter from professional representative], which is to be expected from a careful applicant taking part in business life.”

EPO T 1426/14 -  link

Reasons for the Decision

Board's competence to decide

1. According to Rule 136(4) EPC the department competent to decide on the omitted act shall decide on the request for re-establishment of rights. The noting of loss of rights was issued by the formalities officer on behalf of the examining division. At that time, however, the appeal proceedings were pending. Thus the loss of rights resulting from the failure to pay the renewal fees occurred in the course of the appeal proceedings. Given that with the commencement of the appeal proceedings, the competence to decide on the case has moved from the department of first instance to the Boards of Appeal (T 473/91, OJ EPO 1993, 630, Reasons 1.2), the Board is competent to decide on the request for re-establishment of rights (T 555/08, Reasons 2; see also T 936/90, Reasons 1; T 1381/11, Reasons 2; T 649/13, Reasons 3 and T 1201/10, Reasons 1).

T 1389/18 - Interruption of proceedings

Key points

• The Board confirms that the Legal Division can also retroactively conclude that an interruption of proceedings took place under Rule 142 EPC (this was not contested by the parties). In this case, the LD had found an interruption of proceedings due to insolvency proceedings being opened against one of the parties. The difficulty of the case that the LD found this on 04.01.2018, with effect of 01.08.2017, wheres oral proceedings had taken place on 12.09.2017 wherein the OD had pronounced the (interlocutory) decision that the patent can be maintained in amended form. Notices of appeals were filed on 15.01.2018 and 16.01.2018. 
• The Board concludes that any oral proceeding and any decision pronounced during such oral proceedings become non-existent if they take place during an interruption of proceedings.
• Hence, in the present case, with a retroactively found interruption of proceedings, there is no valid decision of the OD. Hence, the appeal is moot ("gegenstandslos"), the appeal proceedings are terminated "without a decision on the matter".
• As a comment, Rule 101(1) stipulates that an appeal is rejected as inadmissible if it does not comply with Article 106 EPC stating that "appeal shall lie from decisions".
• The Board refunds the appeal fee. The Board distinguishes from J 12/16, wherein the Legal Board had also found the appeal to be moot ("gegenstandslos") but had not refunded the appeal fee, because in J12/16 the appeal (concerning a request for registration of a transfer of an application) became moot during the appeal procedure (by the publication of the mention of the grant). 
• A further matter is that on the Legal Division had found on 31.07.2018 a further interruption of proceedings with effect of 01.06.2018 (again due to the insolvency of the patentee). The present Board finds that the Board needs to comply with this interruption, thereby distinguishing from T854/12 (r. 1.2.6.b; as a comment I think that there the reverse torpedo of the appeal procedure is meant). In T854/12, the Board found that it needs to decide itself on a possible interruption of proceedings in view of the devolutive effect of appeal. The present Board concludes that the devolutive effect is restricted for the case of a moot appeal, precisely in order to avoid that parties can "torpedo" the first instance proceedings simply by filing a  document called "appeal" thereby taking away the competence of the first instance departments. 

EPO T 1389/18 -  link


Headnote
1. Die Rechtsabteilung ist grundsätlich befugt, eine Unterbrechung des Verfahrens nach Regel 142(1)b EPÜ auch rückwirkend festzustellen (Gründe 4.).

2. Aus dem Wortlaut der geltenden Vorschrift "Unterbrechung des Verfahrens" und aus dem Gesamtzusammenhang der Regel 142 EPÜ kommt die Kammer zu dem Ergebnis, dass auch eine, während der Unterbrechung stattgefundene mündliche Verhandlung und eine in der Verhandlung verkündete Entscheidung der Einspruchsabteilung rückwirkend als nicht existent betrachtet werden müssen (Gründe 7.).

3. Dies bedeutet, dass es keine rechtswirksame Entscheidung der Einspruchsabteilung gibt. Folglich sind auch die Beschwerden vor der Kammer gegenstandslos, so dass das Beschwerdeverfahren ohne Entscheidung in der Sache beendet werden muss (Gründe 10.).

Sachverhalt und Anträge

I. Die vorliegenden Beschwerden betreffen die am 6. November 2017 zur Post gegebene Zwischenentscheidung der Einspruchsabteilung des Europäischen Patentamts betreffend die Aufrechterhaltung des Europäischen Patents Nr. 2220689 in geänderter Form.

II. Die für die Beschwerden relevanten Ereignisse lassen sich wie folgt zusammenfassen.

III. Am 12. September 2017 fand eine mündliche Verhandlung in Anwesenheit der Patentinhaberin und der Einsprechenden 1 und 4 statt. Am Ende der Verhandlung wurde die Zwischenentscheidung der Einspruchsabteilung verkündet. Die schriftliche Entscheidung wurde am 6. November 2017 zur Post gegeben, so dass die Beschwerdefrist am 16. Januar 2018 endete.

IV. Die Rechtsabteilung teilte den Parteien in einer Mitteilung vom 7. November 2017 mit, dass gegen eine der Patentinhaberinnen ein Insolvenzverfahren eingeleitet wurde. Damit musste die Rechtsabteilung prüfen, ob die Voraussetzungen für die Unterbrechung des Verfahrens nach Regel 142 (1) b) EPÜ vorlagen. Die Parteien erhielten Gelegenheit zur Stellungnahme, nach Aktenlage gingen jedoch keine Stellungnahmen beim EPA ein.

T 2076/15 - Request refund search fee in appeal

Key points

• In this examination appeal, the Boards finds the claims allowable. The Board then has to decide on the request for a refund of the paid additional search fee. The Board concludes that it is not competent to decide on the request, because it was made for the first time with the Statement of grounds in appeal. This follows from Rule 64(2) EPC, which refers to the Examining Division, according to the Board. 

EPO Headnote
Stellt der Beschwerdeführer im Prüfungsbeschwerdeverfahren erstmalig vor der Beschwerdekammer einen Antrag gemäß Regel 64 (2) EPÜ auf Rückzahlung einer gemäß Regel 64 (1) EPÜ zusätzlich entrichteten Recherchengebühr, so ist die Beschwerdekammer hierfür unzuständig und der Antrag daher unzulässig


EPO T 2076/15 - link

4.3 Der Gegenstand der unabhängigen Ansprüche 1 und 6 und der abhängigen Ansprüche 2 bis 5 und 7 beruht daher auf einer erfinderischen Tätigkeit (Artikel 56 EPÜ).

5. Nach Auffassung der Kammer genügen die Anmeldungsunterlagen gemäß dem vorliegenden Antrag der Beschwerdeführerin und die Erfindung, die sie zum Gegenstand haben, auch den übrigen Erfordernissen des EPÜ im Sinne von Artikel 97 (1) EPÜ. Somit kann die Erteilung eines Patents in dieser Fassung erfolgen (Artikel 111 (1) EPÜ).

6. Antrag auf Rückzahlung einer Recherchengebühr

6.1 Während der Recherche wurde durch die Beschwerdeführerin eine weitere Recherchengebühr entrichtet, nachdem die mit der Anmeldung eingereichten Ansprüche von der Recherchenabteilung als nicht einheitlich angesehen wurden (Regel 64 (1) EPÜ). Mit der Beschwerdebegründung hat die Beschwerdeführerin die Rückzahlung der zusätzlich bezahlten Recherchengebühr beantragt (Regel 64 (2) EPÜ).

T 0756/14 - Leave to appeal

Key points

• The Board indicates that if a first instance department decides to allow an appeal against an interlocutory decision, this decision to allow an appeal should be included in the order of the decision.
• As a comment, this should also apply to decisions of the OD to maintain a patent in amended form (the substantive decision of the OD, which is taken before the translated claims are filed). 
• The interlocutory decision concerns the request for refund of a paid further search fee. The Board sees a substantial procedural violation in that the decision to refuse this request, is based for the first time on lack of unity of invention based on D3.
• As a note, the application was refused with a decision of 02.11.2012, which was appealed separately (case T2482/12). An interesting question is whether the case can be remitted to the ED for a decision on the refund of the additional search fee of all, in view the competence of the Board? Also, the ED's decision of the search fee was issued on 23.02.2012, the Notice of appeal was filed on 19.03.2012, so I wonder if the not the entire case is before the Board when the Examining Division took the refusal decision.  "On appeal, the department of first instance loses its competence for the further prosecution of the application for all contracting states - the appeal does not leave a part of the application pending in the first instance." (CLBA, IV.E.1.2 )
• Note 28.12.2018: appeal against an interlocutory decision refusing the request for refund of a search fee was of course accepted in G1/11 (with referral decision J21/09). 

EPO Headnote
Die Zulassung einer gesonderten Beschwerde gegen eine Zwischenentscheidung im Sinne des Artikels 106(2) EPÜ ist eine konstitutive Entscheidung der Prüfungsabteilung, die die Anfechtbarkeit im Beschwerdeweg erst begründet und daher in den Tenor aufzunehmen ist.

EPO T 0756/14 - link

Entscheidungsgründe

1. Gemäß Regel 103(1)(a) EPÜ wird die Rückzahlung der Beschwerdegebühr angeordnet, wenn der Beschwerde durch die Beschwerdekammer stattgegeben wird und die Rückzahlung wegen eines wesentlichen Verfahrensmangels der Billigkeit entspricht.

2. Die Beschwerdeführerin begründet ihren Antrag auf Rückzahlung der Beschwerdegebühr mit einigen vorgebrachten Verfahrensfehlern seitens der Prüfungsabteilung (siehe Begründung der Beschwerde, Abschnitt II, Seiten 3 bis 4).

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.