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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.
    • G 10/91: "Although Article 114(1) EPC formally covers also the appeal procedure, it is therefore justified to apply this provision generally in a more restrictive manner in such procedure than in opposition procedure."
    • The ground is not a new ground of opposition in appeal, clearly.
    • Any late submissions on the ground would be covered by Article 13(1) RPBA which allows the Board to admit the submissions.
    • The provisions of the RPBA 2020 do not take away any "power" of the Board to consider submission but only specify how the Board apply their discretionary powers under Art. 14 and Art. 123(1) EPC. Hence, Art. 12(5) RPBA 2020 or the equivalent Art. 12(4) RPBA 2007, the final clause, can not be the legal basis. 
  • "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 the discretion for later submission 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, Rule 99 is cited in connection with the patentee's main request, but the opponent's appeal concerns only Auxiliary Request 1'' (the claim set the Opposition Division found allowable. So the provision seems to be cited against the opponent as the respondent if I understand it 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 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.




source http://justpatentlaw.blogspot.com/2022/09/t-185416-applying-rule-992-epc-to.html
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