T 1839/18 - Strawman oppositions revisited

 Key points

• In this opposition appeal, patentee argues that the opposition was filed by a strawman and that the opposition is hence inadmissible. The named opponent is a natural person.
• Patentee's argument is that “at no point had the opponent proven that he had a true interest in the opposition, which however was a condition for any procedural act under the EPC. This position was supported by decision G 1/06 that thereby superseded earlier decisions to the contrary such as G 3/97.” G 3/97 hn.1(a) held that “an opposition is not inadmissible purely because the person named as opponent [...] is acting on behalf of a third party.”*
• G1/06 pertains to the application of Article 76(1) EPC for divisional applications but includes the paragraph: “13.4 The Board accepts that the principle of prohibition of double patenting exists on the basis that an applicant has no legitimate interest in proceedings leading to the grant of a second patent for the same subject-matter if he already possesses one granted patent therefor.” 
• This paragraph is the subject of referral G4/19 (pending as of 21.04.2021).
• The Board undertakes an extensive review of the case law and also a comparative and historical legal analysis (legal board member Mr. Heath). 
• The Board: “Summarising, the political rationale behind the remedy of opposition to be initiated by any person is the public interest. Already the English Statute of Monopolies 1623/24 has spelt out that patent monopolies are a burden to society. Their grant can only be justified by their technical contribution to society. Any person challenging a patent by way of opposition contributes to society by clearing the register from undeserved monopolies (where the patent is revoked), by reducing monopolies to the scope of their technical contribution (where the patent is limited in scope), or by adding legal certainty (where the patent is maintained unamended). Patents that are granted without meeting the requirements of patentability put in jeopardy the patent system's purpose of fostering industrial development in that competitors wishing to engage in research and development may divert such activities due to such wrongful titles. A further reason is that by opposition proceedings, legal certainty is enhanced.”
• “The Board therefore remains unconvinced that the Enlarged Board's case law on "straw man" oppositions is inconsistent with later decisions, has been superseded or is in contravention of Art. 6 ECHR. Nor is it able to see how such an opposition might put the proprietor at a procedural disadvantage. Finally, labelling an opponent as a "straw man" is misguided, as no interest in raising an opposition is necessary or needs to be proven, and consequently any argument based on an opponent's alleged lack of "real interest" must fail.”
  
  

*) of course hn.1b adds: "Such an opposition is, however, inadmissible if the involvement of the opponent is to be regarded as circumventing the law by abuse of process" with further details given in the decision and in headnote 1(c).

Disclosure: the decision indicates V.O. - the firm where I work - as representative of the opponent.

https://www.epo.org/law-practice/case-law-appeals/recent/t181839eu1.html

Reasons for the Decision

1. The appeals are admissible.

2. Admissibility of the opposition

2.1 The patentee argued that the opposition was not validly filed because the opponent, whom the patentee referred to as a garage owner in Valladolid (Spain), had no interest whatsoever in doing so.

2.2 Of the various arguments advanced by the patentee to question admissibility of the opposition is decision G 1/06 (OJ 2008, 307), namely the following passage:

"13.4 The Board accepts that the principle of prohibition of double patenting exists on the basis that an applicant has no legitimate interest in proceedings leading to the grant of a second patent for the same subject-matter if he already possesses one granted patent therefor."

The patentee construes this statement as a general acknowledgement that every act performed before the EPO requires a legitimate interest, thereby making previous case law of the Enlarged Board in regard of straw man oppositions obsolete.

T 0682/16 - Non-human genetically engineered organisms

Key points

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

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

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

EPO T 0682/16 -  link

Reasons for the Decision

Admissibility of the joint opposition and of the appeal

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

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

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

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

Admission of the main request into the appeal proceedings

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

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

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

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

Main request

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

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

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

Order

For these reasons it is decided that:

1. The joint opposition and the appeal are admissible.

2. The decision under appeal is set aside.

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

T 2439/17 - No response from the respondent

Key points

• In this opposition appeal, the Board allows the appeal and rejects the opposition, noting that the respondent [opponent] had not reacted in any way during the appeal.
• “Die Beschwerdegegnerin hat im Beschwerdeverfahren weder Eingaben gemacht noch Anträge gestellt.”
• As a comment, the online file does not even show an acknowledgement receipt that the respondent had received the Statement of grounds, which was the only document send to the respondent during the entire course of the appeal (besides the communication about the appeal number). This is quite surprising to me, in view of R7/09 (the first successful petition for review).
• I'm surprised that the decision does not state that it was checked in any way that the respondent was aware of the appeal proceedings.
• update 26.05.2020:  the online file now shows a letter dated 20.05.2020 about a missing advice of delivery from the opponent. 
• The decision is also interesting in that the opponent was a shell company (a Hong Kong Limited, founded by a law firm and a ‘company service provider’. This does not affect the admissibility of the opposition. The extract from the Chamber of Commerce proving the existence of the Limited is enough).

EPO T 2439/17 -  link

Sachverhalt und Anträge

VI. [...] Die Beschwerdegegnerin hat im Beschwerdeverfahren weder Eingaben gemacht noch Anträge gestalt. 

Entscheidungsgründe

2. Die Beschwerde ist zulässig.


3. Zulässigkeit des Einspruchs (Regel 77(2) EPÜ)


Die Beschwerdeführerin hat die Zulässigkeit des Einspruchs bestritten. Die Existenz der Einsprechenden als juristische Person sei nicht nachgewiesen. Als Belege wurden von der Patentinhaberin im Einspruchsverfahren D12 und von der Einsprechenden D13 vorgelegt. Eine Nichtexistenz der Einsprechenden hätte nach Regel 77(2) EPÜ eine Nichtzulässigkeit des Einspruchs zur Folge.


Die Einspruchsabteilung kam zu dem Schluss, dass die Voraussetzungen der Identität der Einsprechenden unter Regel 76(2) i.V.m. Regel 41(2)(c) EPÜ erfüllt sind. Der Registerauszug D13 belege die Existenz der Firma. Sie stellte daher keine Mängel unter Regel 77(2) EPÜ fest und ließ den Einspruch zu.


Die Beschwerdeführerin hat im Beschwerdeverfahren keine weiteren Beweise vorgelegt, sondern argumentiert, die Einsprechende sei unbekannt, in keiner Weise geschäftlich aktiv und ihre Stellung als juristische Person nach Hong Konger Recht sei nicht belegt. Die Kammer kann dem nicht folgen. Der Registerauszug D13 belegt die Existenz der Firma. Die Beschwerdeführerin hat dies nicht glaubhaft anzweifeln können. Weder Bekanntheit noch nachweisliche (hier: im Internet) geschäftliche Aktivität sind im EPÜ geforderte Voraussetzungen für die Erlangung der Einsprechendenstellung.


Die Kammer sieht daher keine Veranlassung, in diesem Punkt von der Entscheidung der Einspruchsabteilung abzuweichen.


Hauptantrag: Patent wie erteilt


[...]

Entscheidungsformel

Aus diesen Gründen wird entschieden:

Die angefochtene Entscheidung wird aufgehoben.

Der Einspruch wird zurückgewiesen.

T 0872/13 - Strawman opponent and acceleration appeal

Key points

• The opponent asks for acceleration of the appeal. The opponent is "Strawman Limited". The opponent submitted that: "The real party of interest behind the opponent Strawman Limited was CSL Limited, which was developing a recombinant Factor VII- albumin fusion protein and therefore needed certainty to continue its development activities in view of the large sums involved. Any decision of CSL Limited as a potential licensee under the patent depended on the outcome of the appeal proceedings, and thus the request for accelerated proceedings should be granted as falling within one of the examples given in tOJ 2008 p.220].
• The Board denies the reuest. "As to the appellant-opponent's second request for acceleration, the board noted that the party requesting acceleration, the appellant-opponent, had not argued that it had itself a legitimate interest in the proceedings being dealt with rapidly. The interests on which the request for acceleration were based concerned the company CSL Limited. This company was however not a party to the present appeal proceedings and the board saw no reason why the interests of this third party should be attributed to the appellant-opponent." 
• This shows a disadvantage of a strawman opponent. 

EPO T 0872/13 - link

XVII. The arguments of the appellant-opponent, in so far as they are relevant to the present decision, may be summarised as follows:

Request for accelerated proceedings

The patent was causing uncertainty and hampering investment and development decisions by interested parties (first request for acceleration presented with the statement of grounds of appeal). The real party of interest behind the opponent Strawman Limited was CSL Limited, which was developing a recombinant Factor VII- albumin fusion protein and therefore needed certainty to continue its development activities in view of the large sums involved. Any decision of CSL Limited as a potential licensee under the patent depended on the outcome of the appeal proceedings, and thus the request for accelerated proceedings should be granted as falling within one of the examples given in the Notice from the Vice-President DG3 of 17 March 2008 (OJ EPO 2008, 220; second request for acceleration of the appeal proceedings).

T 1755/14 - Non-existent opponent and correction identity

Key points

• In this opposition appeal, it becomes apparent that the legal entity named as opponent in the Notice of opposition, did not exist at the date of filing the opposition, because it was a KG (limited partnership under German law) which was dissolved about 1 October, i.e. before the  Notice of opposition was filed on 8 October. The Board is satisfied that a universal succession took place on 1 October from the KG to the AG (a different entity, and a partner in the KG).  Hence, the KG no longer existed on 8 October.
• The Board allows a correction of the opponent identity under Rule 139 from the KG to the AG. 
• " There is nothing to indicate that the true intention was to file the opposition in the name of a person other than the only successor of the person who originally instructed its representative to file the opposition. The board is convinced that the representative (who may not have been aware of the succession on 8 October 2010) had intended to file the opposition on behalf of the entity which had acquired all the assets and liabilities of the entity that gave him the instruction to file the opposition".
• The OD had found the opposition to be inadmissible due to the non-existence of the KG at the filing date of the opposition; the Board allows the appeal and remits the case.

EPO T 1755/14 - link

Reasons for the Decision

1. Admissibility of the appeal

1.1 The opposition was filed on behalf of SymKG and the opponent was referred to as "SymKG" throughout the opposition proceedings. The respondent challenged the admissibility of the appeal filed by SymAG, arguing that the requirements of Article 107 EPC were not met since SymAG had not been a party to the opposition proceedings.

1.2 Since no other issues concerning the admissibility of the appeal have been raised by the respondent or identified by the board, the admissibility of the appeal depends solely on the identity of the opponent. If SymAG was recognised as the opponent, it would be adversely affected by the decision under appeal and its appeal would be admissible.

2. Universal succession from SymKG to SymAG

T 0598/98 - Opposition and lapse

Key points

• In recent decision T 1403/16 the Board said that: " the decision on whether or not to continue the opposition proceedings under Rule 84(1) EPC lies within the opposition division's discretion" . 
• I was a bit surprised by this, because to me it seems weird that if the opponent requests continuation, the OD can decide at their discretion to terminate the proceedings.
• Both the Benkard book (2nd, art. 99, nr. 62) and the Singer/Stauder (5th ed. Art. 101 nr. 70) say that the decision is a discretionary one, Singer referring to T 598/98. Therefore, today's post is about that decision.
• The T 598/98 decision is in German, so I give the German text of Rule 84(1) first:  "ist das Patent in allen diesen Staaten erloschen, so kann das Einspruchsverfahren fortgesetzt werden, wenn der Einsprechende dies innerhalb von zwei Monaten ... beantragt". 
• The Board takes "kann"  is indicating that continuation is optional, not as indicating that the Opponent's request is a requirement for continuation (if it indicates a requirement, continuation can still be mandatory if the requirement is fulfilled).
• The Board "Die Entscheidung, das Verfahren entweder einzustellen oder fortzusetzen, liegt somit nach dem Wortlaut der Vorschrift auch dann im Ermessen der Einspruchsabteilung, wenn der Einsprechende die Fortsetzung des Verfahrens beantragt hat." 
• This result is still weird taking into account that under Article 99(3) EPC 1973, " an opposition may be filed even if the European patent has been surrendered or has lapsed for all the designated States." The EPC gives you a right to file opposition, but whether the OD actually considers the opposition in substance is at the OD's discretion under T 598/98.
• To cite the Travaux Préparatoires, Rule 60, M/PR/1, point 94, point 2284, the idea of Rule 60 is "to recognise an opponent's right to have opposition proceedings continued where a European patent had been surrendered or had lapsed while opposition proceedings were still in progress" (emphasis added). From the proposal (M/14, p. 102) leading to the text: "if any party interested is granted the right to institute proceedings against a European patent which has been surrendered or which has lapsed for all the designated States, it would logically be necessary to grant the opponent the right to have the opposition proceedings continued where the European patent is surrendered or lapses whilst the proceedings are taking place" (emphasis added; also referenced in T598/98).
• This understanding was confirmed in T740/15: the Board deduces "from the Travaux Préparatoires that in the presence of a valid request of the opponent to continue the opposition proceedings [], the scope of Rule 60(1) EPC (now Rule 84(1) EPC) was intended to limit the discretion of the opposition division to the continuation of the opposition proceedings. The opposition division had therefore in the circumstances of the present case no other discretion than to continue the opposition proceedings." For some reason, T 598/98 is still in CLBA IV.C.4.1.2.a whereas T 740/15 is in CLBA IV.C.4.1.2. 
• Perhaps it is no coincidence that T 598/98 is in German. From T 598/98: "Im deutschen Patentrecht wird die Auffassung vertreten, daß das Erlöschen des Patents zur Erledigung des Einspruchsverfahrens [i.e. for the DPMA] in der Hauptsache führt. Das Einspruchsverfahren wird nur fortgeführt, wenn der Einsprechende ein schutzwürdiges Interesse an dem rückwirkenden Widerruf des ex nunc erloschenen Patent dartun kann" (See also Benkar, loc. cit.)
• The Board decides in T 598/98 that it must take into account "procedural economy" in view of the duration and number of other appeal cases pending before it. In my view, where the legislator so clearly wishes to give the opponent a right (even if the wording of the provision is not unambiguous), work load of the Board can not be a factor.
• Finally, the Patentee can terminate the substantive opposition proceedings at any time by disapproving the text / requesting revocation. The fact that the Patentee does not do so, indicates that there is commercial value in the patent, confirming that the opposition is not meaningless.
• The Guidelines state in GL D-VII 5.1 that " the opposition proceedings must be continued at the request of the opponent filed within two months after the date on which the opposition division informed the opponent of the surrender or lapse" (emphasis added). The Guidelines also state that " If, in the case of a request for continuation of the proceedings, the patent proprietor has renounced before the competent authorities in the designated states all rights conferred by the patent with ab initio and universal effect, or if no request for continuation has been received within the time limit, the opposition proceedings will be closed. The decision to close the proceedings will be communicated to the parties." This of course is contradictory: what if the Patentee alleges that he has renounced ab initio and with universal effect, but the opponent requests continuation? In that case it would be convenient if the Patentee would disapprove the text in opposition, leading to revocation of the patent by the OD, which should not change anything for Patentee if the patent was indeed renounced entirely, ab initio, and with universal effect.

EPO T 598/98 -  link

EPO Headnote

1. Das Bestehen eines Rechtsschutzinteresses der Einsprechenden an einem rückwirkenden Widerruf des Patents ist eines der Elemente, die für die Entscheidung der Kammer über Einstellung oder Fortsetzung des Einspruchsbeschwerdeverfahrens gemäß Regel 60 (1) EPÜ eine Rolle spielen können.

2. Das allgemeine Interesse an einer zentralen Feststellung über die Patentwürdigkeit einer in einem Patent beanspruchten Erfindung rechtfertigt es jedenfalls dann, ein Verfahren nach Erlöschen des Patents gemäß Regel 60 (1) EPÜ noch bis zum Erlaß einer Endentscheidung fortzusetzen, wenn die Sache im Zeitpunkt des Erlöschens im wesentlichen entscheidungsreif ist, und es auch im Hinblick auf den Bestand des Patents einen Unterschied im Ergebnis ausmacht, ob eine Sachentscheidung getroffen oder das Verfahren bloß eingestellt wird (hier: Widerruf des Patents durch die Kammer nach Zurückweisung des Einspruchs durch die Einspruchsabteilung).

Entscheidungsgründe

1. Fortsetzung des Verfahrens (Regel 60 (1) EPÜ)

T 1403/16 - Termination of opposition

Key points

• In this opposition case, the EPO had sent a Communication under Rule 84(1) EPC to the opponent, informing him that the patent had lapsed (or was surrendered) in all designated States and setting a period of 2 months for requesting continuation of the opposition. The Opponent had requested continuation, but only after expiry of the period. The opponent had filed the request with a request for re-establishment of rights. The OD decides that the RE request is inadmissible, and that the opposition proceedings are discontinued.
• The Board considers that in this case, RE is not available, because the condition of Article 122 EPC, that  "the non-observance of this time limit has the direct consequence of causing [...] the loss of any other right..." is not met. 
• The Board (1) "In opposition proceedings, in the event of a failure to reply in due time to a communication from the opposition division, there is no loss of rights which occurs automatically by operation of law. The board observes that the legal situation is different in the proceedings up to grant, where failing to reply to a communication in due time leads to a loss of rights by operation of law (application deemed withdrawn; see for example Article 94(3) and (4) EPC)." 
• The Board (2) then considers that a failure to reply to a Communication of the OD under Article 101(1) EPC "does not have any direct legal effect within the meaning of Article 122(1) EPC". The  Board then reasons that "This conclusion equally applies to the time limit under Rule 84(1) EPC." The Board further adds that "A discontinuation of the opposition proceedings under Rule 84(1) EPC generally requires an appealable decision by the opposition division. Hence, non-compliance with the two-month time limit under Rule 84(1) EPC does not directly cause a loss of rights."
• The Board then explains that (3) "If an opponent requests that the opposition proceedings be continued, but does so only after expiry of the two-month time limit under Rule 84(1) EPC, it is up to the opposition division to consider that request - by application of Article 114 EPC - and to decide on whether or not to continue them. If, where appropriate, the opposition division takes a decision to discontinue the proceedings, this decision is open to appeal."
• The Board then (4) states that: "In the light of the above, the decision under appeal is based on an inaccurate assessment of the legal situation underlying the case in hand. In consequence, the board judges that the opposition division's decision has to be set aside and the case remitted in order for the opposition division to decide on whether or not to continue the opposition proceedings under Rule 84(1) EPC, provided that the appellant confirms that it wants them to be continued."
• As a comment to point (1), for the formalities examination during grant (Rule 58), the consequence is generally a refusal under Article 90(5) EPC. 
• As a comment to point (2), issuing an (appealable) decision to discontinue the appeal under Rule 84 EPC is established practice at the EPO (see e.g. T 740/15, r. 3) and was in fact issued in this case on 06.04.2016. Under point V(iii), the Board notes that such decision was indeed taken by the OD in this case; simultaneously with the decision rejecting the RE request as inadmissible.
• As a comment to point (3),  the decision is not very clear at this point ("if the OD takes a decision") about whether the Board takes into account that the OD had actually already issued such appealable decision. Possibly, the Board implicitly assumes here that the OD has not already taken the decision to discontinue the proceedings (which is normally done shortly after expiration of the 2 months  time limit, but with some delay for the possibility of requests filed by paper mail under Rule 133(1) EPC). If such decision to discontinue has already been taken, in my view filing the request later does not help (appeal is possible, and may reopen the possibility to file the request by analogy to J18/08).
• As a comment to point 4, possibly the Board expresses here that the OD's decision to discontinue fails to give reasons on whether to admit the request under Article 114 (lack of reasoning would be a substantial procedural violation, but the Board is silent about that). Also possible is that the Board here only thinks of the decision on the RE request as the "decision under appeal'. 
• The Board's decision furthermore includes the remark that: "Rather, the decision on whether or not to continue the opposition proceedings under Rule 84(1) EPC lies within the opposition division's discretion."
• As a comment, This suggest that the OD may decide to discontinue at its discretion even if the opponent requests continuation. That, surprisingly for me, is indeed what old case law suggests  (T598/98)  but seems a rather weird result. The easy case, of  no request, leaves no discretion to continue (T 329/88). 
• The Board's decision makes sense at least for the following point: if the sanction on not replying in time is a decision, the decision is taken ex nunc, i.e. based on an examination of the file as it stands on the date of taking the decision, and the decision must take into account a late response at least consider whether to admit the late filed response under Article 114 EPC.

EPO T 1403/16 -  link

Rule 84(1) 

If the European patent has been surrendered in all the designated Contracting States or has lapsed in all those States, the opposition proceedings may be continued at the request of the opponent filed within two months of a communication from the European Patent Office informing him of the surrender or lapse.

Summary of Facts and Submissions

I. The present appeal lies against the decision of the opposition division of 6 April 2016 concerning the discontinuation of the opposition proceedings under Rule 84(1) EPC.

T 1207/15 - The phrase "maintaining patent unamended"

Key points

• In this decision, the order of the Board is that "The patent is maintained unamended" .
• However, article 101(2) EPC, second sentence, says that the OD "shall reject the opposition" . Article 101(3) EPC speaks only of "decide to maintain the patent as amended" . Article 111(1) EPC gives the Board "any power within the competence of the [first instance department]" , not more. 
• In my view, " maintaining a patent unamended"  is an informal way of referring to "rejecting the opposition"  under Article 101(2) EPC. 
• However, it appears to be the new standard phrase (see e.g. also T 2215/14; T2456/12).
• So, requesting that the patent is "maintained unamended"  is is not sloppy. (edit 14.10.2018). 
• Edit 14.10.2018: a kind reader has pointed out that the Board use the phrase already for a long time, e.g. in T 323/03 and T97/96 and, as "the European patent is maintained as granted", in T 857/00.

EPO T 1207/15 - link

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is maintained unamended.

T 1213/13 - Death of opponent

Key points

• The opponent-appellant died during the appeal procedure. The Boards sends a notification to enquire whether there are any heirs. No response is received. The Board declares to close the appeal procedure. 

EPO T 1213/13 - link

Exposé des faits et conclusions

I. Le requérant (opposant) a formé un recours contre la décision de la division d'opposition rejetant l'opposition contre le brevet européen N**(o) 1 870 510.

II. Suite à une citation à une procédurale orale, la chambre de recours a été informée par télécopie du décès du requérant par Mme C., pacsée avec le défunt, domiciliée à la même adresse. La copie d'un acte de décès a été transmise simultanément.

III. La procédure orale a été annulée.

IV. Une notification de la chambre conformément à la règle 100(2) CBE, envoyée à l'adresse du requérant (et à l'intimée-titulaire), visait à établir si le requérant décédé a laissé des héritiers habiles à lui succéder qui entendaient continuer la procédure de recours. Selon la chambre, à défaut d'héritier intéressé et à défaut de réponse dans le délai suivant la notification, la procédure devrait être close.
V. Aucune réponse fut reçu.

Motifs de la décision

1. La chambre constate que le requérant, i.e. la seule partie à la procédure aux prétentions de laquelle la décision attaquée n'a pas fait droit (article 107 CBE), est décédé.

T 1789/11 - Replenishing deposit account

Key points

• The Board confirms that old point 6.5 of the ADA, which provided the possibility to replenish a deposit account with 30% administrative after a time limit for payment, resulting in  a valid payment, was valid. (This rule is now abolished).

• The application was filed in 1995, the patent is revoked in 2016. The application was first refused, in the examination appeal T 0424/03, the Board inter alia found Article 56 EPC to be complied with, because, essentially, copying e.g. an image from an email and pasting as a file in a folder (and not pasting into another document) was not obvious in view of Windows 3.1.
• The present Board revokes the patent based on lack of inventive step as the same features would be obvious in view of the same prior art (Windows 3.1), even if the OD decision was based on insufficiency of disclosure. The Board also notes that it sees no basis in the description of the patent for the statement in T 0424/03 that the data format would be changed during the transfer operation. The parent, and the five divisional applications, are all revoked for lack of inventive step. 

EPO  T 1789/11 - link

2. The admissibility of the opposition

2.1 The appellant has questioned the admissibility of the opposition. Hence the board has considered this issue, since, if the opposition were inadmissible, then the appeal would already be allowable for this reason alone.

2.2 For the reasons set out below, the board finds that the opposition fees for all six notices of opposition were paid on 23 May 2008, the last day of the opposition period, Article 99(1) EPC, extended under Rule 134(1) EPC, and that all six oppositions are therefore admissible.
[...]

2.5 In a submission received on 29 October 2010, the proprietor stated that online file inspection revealed that in all five divisional cases the opponent had made a payment of ¤ 201 on 30 May 2008, this being 30 % of the opposition fee, meaning that the opposition fee for the five divisional cases had not been paid prior to expiry of the opposition period.

T 1150/11 - Reverting to granted claims

Key points

• The Board confirms as established case law that the patentee may revert from a main request back to the claims as granted, during opposition procedures. Filing a main request before the OD is no surrender of parts of the patented subject-matter.

T 1150/11 - link

Entscheidungsgründe

1. Die Beschwerde ist zulässig.

2. Verfahrensanträge

2.1 Die Beschwerdeführerin hatte beantragt, die Angelegenheit an die Einspruchsabteilung zurück zu verweisen, da diese die angefochtene Entscheidung auf der Grundlage der erteilten Ansprüche getroffen habe. Die Patentinhaberin habe jedoch bereits während des Einspruchsverfahrens durch Vorlage eines eingeschränkten Hauptantrages auf die erteilte Fassung verzichtet.

T 0735/12 - No Rule 137(5) in opposition

Key points

• The Board holds that Rule 137(5) EPC (unsearched subject-matter) is not applicable for amendments made to the patent in opposition.

T 0735/12 -  link

Entscheidungsgründe

[] 3.4 Nicht recherchierte Gegenstände

Der von der Einsprechenden 2 unter Verweis auf Regel 137(5) EPÜ erhobene Einwand, dass der Anspruch 1 Merkmale enthalte, die lediglich der Beschreibung entnommen und daher nicht recherchiert worden seien, kann schon deshalb nicht greifen, da sich Regel 137 EPÜ lediglich auf "Änderungen der europäischen Patentanmeldung" [Hervorhebung hinzugefügt] bezieht und somit für das Einspruchs(beschwerde)verfahren nicht massgeblich ist, wie auch unter Punkt 3.4 der angegriffenen Entscheidung korrekt dargelegt.

Der unter Regel 137(5) EPÜ erhobene Einwand ist daher als unzulässig zu verwerfen.

T 0830/11 - No Rule 43(2) in opposition

Key points

• The Board decides that Rule 43(2) EPC (multiple independent claims in the same category) is not applicable in opposition. This is based on G 1/91.
• Filing date in 1998, grant in 2007. Now a remittal.

T 0830/11 - link 

8. Appellant's auxiliary request 4

8.1 Auxiliary request 4 comprises three independent claims 1, 2 and 4. Said claims correspond, respectively, to a combination of claims 1, 2 and 3, claims 1, 2 and 4, and claims 1, 2 and 7 of auxiliary request 2.

8.2 Auxiliary request 4 was not admitted by the opposition division into the opposition proceedings under Article 114(2) and Rule 116(2) EPC because the three independent claims did not fulfill the requirements of Article 84 EPC 1973 as to conciseness and of Rule 43(2) EPC concerning "multiple claims" in the same category. In particular, the opposition division held that the claims were all of the apparatus category and related neither to interrelated products nor to different uses nor to alternative solutions to a particular problem. While claims 1 and 2 were considered to relate to different solutions of the problem of miniaturisation, claim 4 was considered to address the different problem of decoupling of the two output ports and common coupling port.

8.3 Under the circumstances, the role of the Board is, primarily, to ensure that the opposition division made a correct application of its discretion and, in particular, that it applied the correct principles when exercising said discretion.

8.3.1 In this respect, it is noted that auxiliary request 4 was filed for the first time during the oral proceedings before the opposition division (cf. minutes of the oral proceedings before the opposition division, page 5, third paragraph). The exercise by the opposition division of its discretion in order to decide on the admissibility of said late filed auxiliary request 4 was thus legitimate.

8.3.2 The Enlarged Board of appeal held in decision G 1/91 (OJ 1992, 253; Headnote) that:

"Unity of invention (Article 82 EPC) does not come under the requirements that a European patent and the invention to which it relates must meet under Article 102(3) EPC when the patent is maintained in amended form. It is consequently irrelevant in opposition proceedings that the European patent as granted or amended does not meet the requirement of unity".

The opposition division noted in section 6.2 of its decision that "the requirements of Art. 84 and Rule 43(2) EPC have to be fulfilled, regardless of the fact that Article 82 EPC only relates to the European patent application". The position adopted by the opposition division is thus tantamount to deprive the decision of the Enlarged Board of any effects, since it leads to the finding that a request including a plurality of independent claims must be rejected for this very reason.

In the Board's judgement, the condition of conciseness of Article 84 EPC 1973, as well as the dispositions of Rule 29(2) EPC 1973 (Rule 43(2) EPC), have to be construed in opposition proceedings in the light of the findings by the Enlarged Board of appeal (cf. decision G 1/91, Reasons, point 4.2) that "the administrative purposes of unity are fulfilled in the main up to the time the patent is granted. ... In view of the object and purpose of both unity and opposition, it seems neither necessary nor appropriate to continue to attach importance to any lack of unity at the opposition stage. Once the examination procedure has been concluded with the grant of a patent, the requirement of unity has fulfilled its administrative function".

The requirements of Rule 29(2) EPC 1973 (Rule 43(2) EPC) should therefore not constitute an obstacle for the patentee to defend the patent in all its branches (cf. decisions T 263/05 (OJ 2008, 329) and T 1416/04, not published).

In order to avoid any misunderstanding, it should be emphasized that the Board does not question the general applicability of Article 84 EPC 1973 as to conciseness and of Rule 29(2) EPC 1973 (Rule 43(2) EPC) in opposition proceedings. The Board only considers that these norms do not apply to sets of claims whose subject-matter was already claimed in the granted version of the patent.

8.4 In conclusion, the Board considers that the opposition division did not correctly exercise its discretion when deciding on the admissibility of auxiliary request 4 then pending.

8.5 Therefore, the Board admits appellant's auxiliary request 4 into the appeal proceedings.

9. Remittal of the case to the opposition division (Article 111(1) EPC)

During the oral proceedings before the Board, the appellant requested that the case be remitted to the opposition division for further prosecution in case that the Board would admit appellant's auxiliary request 4 into the proceedings. The respondent made no comments in this respect.

In view of this, the Board has no reasons to reject the request for remittal.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the opposition division for further prosecution.

T 2186/12 - Fresh grounds and amendments

Key points

• Amended claims were filed in this opposition appeal. The Board refuses to consider sufficiency of disclosure because it was a fresh ground of opposition and the patentee did not approve its consideration (citing G10/91)
• The decision seems to depart from established case law: " Amendments must be examined fully for compatibility with the EPC. Thus, where the respondents (opponents) first raise an objection under Art. 100(b) EPC during the appeal proceedings to an amended claim, the appellants cannot [] refuse permission to discuss the new ground (T 27/95)." 

EPO T 2186/12 - link

Reasons for the Decision

1. Admissibility of the request (Article 13(1) RPBA)

1.1 Under Article 13(1) RPBA, the admission of any amendment to a party's case after it has filed its grounds of appeal or reply is at the board's discretion. When exercising such discretion, the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy should be considered.

1.2 Since the request was filed after oral proceedings had been arranged, it constitutes an amendment to the appellant's case within the meaning of Article 13(1) RPBA.

1.3 The board observes that claim 1 at issue is limited to the specific type of reaction which was the subject-matter of dependent claim 10 as granted, namely steam reforming of a hydrocarbon. [...]

1.4 The board thus considers that the amendments made in claim 1 are a fair reaction to the decision of the opposition division and to the preliminary opinion of the board. Since the amendments are not unexpected and are not so complex that they would notably change the scope of discussion, and since they could prima facie lead to an allowable set of claims, they are admitted into the proceedings.

[...]

4. Sufficiency of disclosure - Article 83 EPC

The ground of opposition under Article 100(b) EPC not being part of the opposition proceedings, it is a fresh ground of opposition. Since the patentee did not approve its consideration, sufficiency of disclosure cannot be questioned (G 10/91, Reasons 18).

T 1125/13 - Unordered requests

T 1125/13
For the decision, click here

Key points

• In this case, the OD had revoked the patent, the patentee filed an appeal, the opponent had withdrawn its opposition shortly before the oral proceedings, and the appellant/patentee did not attend the oral proceedings. 
• Board: "The appeal proceedings were not affected by the withdrawal of the opposition. The board was still obliged to examine the substance of the opposition division's decision in order to ascertain if it was to be set aside and whether the patent, on the basis of the appellant's requests, met the requirements of the EPC. In so doing, under Article 114(1) EPC the board was able to take account of the submissions and evidence filed by the respondent prior to its withdrawal of the opposition". 
• The Board found the Main Request not allowable. The Board then turned to the Auxiliary Requests. 
• Board: "The appellant submitted the following five sets of auxiliary requests with the statement of grounds of appeal: B, C and D; 1 to 6; 1B to 6B; 1C to 6C and 1D to 6D (see section III above). Thus, the appellant has not presented its claim requests consecutively numbered in descending order of preference, " " As it was the appellant's responsibility to indicate the order of its claim requests, the board could only proceed as far the order of the requests was clear to it. It cannot be for the board to speculate which of the various sets of claim requests the appellant might prefer, or to choose the order which might seem suitable. That would run counter to the principle of party disposition and undermine confidence in the objectivity and impartiality of the board. [...] Accordingly, the board dealt with the appellant's main request but, as it was not in a position to establish which of the auxiliary requests should follow, it had no other choice than to ignore them. "

Reasons for the Decision

1. With its letter of 7 April 2015 the respondent withdrew its opposition. It thus ceased to be a party to the appeal proceedings. The appeal proceedings were not affected by the withdrawal of the opposition. The board was still obliged to examine the substance of the opposition division's decision in order to ascertain if it was to be set aside and whether the patent, on the basis of the appellant's requests, met the requirements of the EPC. In so doing, under Article 114(1) EPC the board was able to take account of the submissions and evidence filed by the respondent prior to its withdrawal of the opposition (see also T 629/90, OJ EPO 1992, 654, Headnote).

2. The duly summoned appellant did not attend the oral proceedings, as announced in its letter of 7 May 2015. In accordance with Rule 115(2) EPC and Article 15(3) RPBA the oral proceedings took place in the absence of the appellant, who was taken to rely on its written submissions.

T 0350/12 - Computer translation

EPO T 350/12

For the decision, click here.

Key points

• The Opponent relied on a computer translation of a Japanese patent as prior art.
• The Board unsurprisingly finds: 
"The Board agrees that the computer translation is of such poor quality that it cannot be relied upon, other than to aid interpretation of the figures contained in the original Japanese document and the Abstract."

Summary of Facts and Submissions

I. The appeal lies from the decision of the opposition division rejecting the oppositions against the European Patent EP-B-1 607 149.

II. Opponent II (hereinafter: the "appellant") filed notice and grounds of appeal against this decision in due form and time.

In its grounds of appeal the appellant based its case on the following documents which had been cited in the opposition proceedings:

OII-D9: DE-A-197 18 529;

OII-D5: EP-A-0 763 391;

OI-D6: JP 06 339 717 with computer translation into English, and Patent Abstracts of Japan;

[...]

T 0972/13 - Not attending can be costly

Keypoint
If you announce you will not attend oral proceedings in opposition appeal, rather than withdraw the request for oral proceedings, you may be ordered to pay the other parties' costs.

Analysis

• Announcing that you will not attend seems to be almost a standard phrase instead of withdrawing the request for Oral Proceedings (precisely because of the advantage that you can show up if you change your mind). This decision shows that it is not risk free.

T 0972/13 - published 31.03.2015

Dated 28.01.2015 - Board 3.2.05 (Poock, Bridge, Vogel) - DE - for the decision, click here

Sachverhalt und Anträge

I. Die Beschwerdeführerin (Patentinhaberin) hat gegen die Entscheidung der Einspruchsabteilung, mit der das europäische Patent Nr. 1 127 712 widerrufen worden ist, Beschwerde eingelegt.

G 3/14 - Examination of clarity in opposition

EPO Headnote
In considering whether, for the purposes of Article 101(3) EPC, a patent as amended meets the requirements of the EPC, the claims of the patent may be examined for compliance with the requirements of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC.

Analysis

• Just one of the numerous aspects that deserve analysis: In [54], the Enlarged Board says: "For example, it has never been doubted that when features are taken from the description and are inserted into a granted claim by way of amendment, the amended claim must be examined for compliance with Article 84 EPC in the light of those new features[]. The basis for this can only be Article 101(3) EPC. The Enlarged Board therefore disagrees with the submissions to the effect that the purposes of Article 84 EPC come to an end with the grant of the patent.
• This confirms that A84 as such only provides a requirement for examination of applications before grant. It is to be recalled that Article 84 EPC  is contained in Part III, Chapter I, titled: "Filing and requirements of the European patent application". 
• Article 101(3) EPC, which provides as follows: "If the Opposition Division [or Board of Appeal] is of the opinion that, taking into consideration the amendments made by the proprietor of the European patent during the opposition proceedings, the patent and the invention to which it relates (a) meet the requirements of this Convention, it shall decide to maintain the patent as amended.
• As FICPI has submitted (log date in register online: 24.08.2014): "On its wording, Article 84 EPC on the other hand relates to the claims of patent applications. The purpose of this article (and all of Articles 75 to 86 EPC) have found their end with the grant of the patent." This is rejected by the EBA in [54], however seemingly more based on established EPO practice than on the EPC.
• The examination of clarity of amendments made in opposition hence seems to be based more or less (arguably) on a tacit requirement of the patent implied in A101(3) EPC rather than on A84 itself. Although this is definitely not what the Enlarged Board concludes in this decision.
  
  
• Addendum 29.04.2021: The Enlarged Board also held that: “A granted claim may turn out not to comply with Article 84 EPC but such non-compliance must be lived with. However, any lack of clarity of the claims may still be highly relevant in opposition proceedings in that it can influence the decisions on issues under Article 100 EPC: []. For example the lack of clarity of a claim may have a profound effect on the outcome of the grounds for opposition according to (i) Article 100(b) / sufficiency []  (ii) Article 100(a) EPC / novelty [], or Article 100(a) EPC / inventive step []. ”

G 3/14 - published 26.03.2015

G 0003/14

Dated 24.03.2015 - Enlarged Board - distribution A - for the decision, click here
Enlarged Board (Van der Eijk, Garnett, Beckedorf, Meinders, Oswald, Spineanu-Matei, Tardo-Dino)