T 0935/12 05-12-2013

1. Admissibility of the appeal

1.1 According to Rule 101(1) EPC an appeal is to be held inadmissible if it does not satisfy the provisions of inter alia Art. 108 and Rule 99(2) EPC.

Article 108, third sentence, EPC reads: "Within four months of notification of the decision, a statement setting out the grounds of appeal shall be filed in accordance with the Implementing Regulations." According to Rule 99(2) EPC, "In the statement of 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."

Regarding the requirements to be met by the statement of grounds of appeal, Art. 12(2) RPBA, although it is not directly related to the (in)admissibility of the appeal, further requires that the statement of grounds of appeal "shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on".

1.2 In the present case, in each of the requests filed with the statement of grounds of appeal the appellant deleted the feature that had been considered insufficiently disclosed by the opposition division. Although it is not explicitly stated in the statement of grounds of appeal, upon reading the contested decision and the statement of grounds of appeal it is immediately apparent that by that amendment the appellant deprived the contested decision of its basis.

1.3 According to consistent case law (Case Law of the Boards of Appeal of the EPO, 7th Edition, 2013, IV.E.2), in order to comply with Art. 108 EPC,

(a) the written statement setting out the grounds of appeal should set out fully the reasons why the appeal should be allowed and the decision under appeal should be set aside. In that respect, the statement setting out the grounds of appeal must enable the Board to understand immediately why the decision is alleged to be incorrect and on what facts the appellant bases its arguments;

(b) exceptionally, where the written statement does not contain such full reasons, the requirement for admissibility may be regarded as satisfied if it is immediately apparent upon reading the decision under appeal and the written statement of grounds that the decision should be set aside (see e.g. J 22/86, OJ EPO 1987, 280: Headnote I and last paragraph of section 2 of the reasons; J 10/11 of 3 December 2012, not published in OJ EPO: section 2.1 of the reasons).

1.4 The main and four auxiliary requests filed together with the statement of grounds of appeal did not contain the features objected to in the appealed decision. Therefore, it is immediately apparent that the basis for that decision no longer exists. Hence, the present case corresponds to case (b) indicated above. Also, the filing of new requests without the features that had been objected to implicitly constitutes the reason why the appellant is of the opinion that the impugned decision should be set aside.

1.5 Apart from the new requests the appellant also submitted reasons justifying the patentability of those sets of claims, also in respect of novelty and inventive step - albeit in a general manner - even though the latter issues had not formed part of the contested decision. Therefore, the appellant's requests can be considered as a bona fide attempt not only to remove the objections on which the contested decision was based but also to explain why the new claims complied with the requirements of the EPC.

1.6 The respondents argued that in order to be admissible an appeal had to deal with the reasons given in the contested decision.

1.6.1 However, the respondents neither identified any provisions of the EPC supporting that argument nor did they show that any of the provisions of the EPC forbade the submission by the patent proprietor/appellant - in particular together with the statement of grounds of appeal - of new requests depriving the contested decision of its basis, even if in doing so he indirectly agreed with the findings of the department of first instance. Such practice is in agreement with consistent case law (Case Law of the Boards of Appeal of the EPO, 7th Edition, 2013, IV E.2.6.5.b) which justifies the expectation of the appellant that its appeal would be held admissible.

1.6.2 The respondents' argument relating to decisions G 8/91, G 9/91, G 10/91 and G 1/99 relies upon a sentence according to which "The purpose of the appeal procedure inter partes is mainly to give the losing party the possibility of challenging the decision of the Opposition Division on its merits" (see e.g. G 9/91: Reasons, section 18). In that respect, the use of the term "mainly" already indicates that it cannot be derived from that sentence that the only purpose of the appeal is to challenge the contested decision. Furthermore, that passage of G 9/91 deals with the introduction of fresh grounds of opposition in appeal and is not directly related to the issue at stake in the present case. Therefore, the respondents' argument cannot be not followed.

1.7 The respondents also argued that the appeal was inadmissible because all the requests filed with the statement of grounds of appeal should not be admitted to the proceedings pursuant to Art. 12(4) RPBA.

However, the admissibility of an appeal should not be confused with the strength of an appellant's case. The requests filed with the statement of grounds of appeal serve to define the legal and factual framework of the appeal. The very filing of such requests is in the present case sufficient to render the appeal admissible, even if those requests are at a later stage not admitted to the proceedings or refused for not being allowable.

1.8 In decision T 2193/09 of 13 July 2010, cited by the respondents, the examining division had not accepted the submission of new requests according to Rule 137(3) EPC. The applicant had lodged an appeal and submitted the same requests without explaining why he considered the examining division wrong in refusing their submission. The Board decided that the appeal was not motivated and therefore inadmissible. Decision 2193/09 thus deals with a different factual situation than the present case and is not relevant here.

1.9 In decisions J 22/86 and T 162/97, also relied upon by the respondents, it was held that the admissibility of the appeal should be evaluated on the basis of the statement of grounds of the appeal and the content of the appealed decision. The present decision does not depart from those findings.

1.10 For those reasons, the requirements of Art. 108 EPC, Rule 99(2) EPC and Art. 12(2) RPBA are satisfied and the appeal is admissible.

2. Admissibility of the requests

2.1 Considering that the main purpose of the appeal proceedings is to give the losing party the possibility of challenging the decision of the opposition division on its merits, the appeal proceedings are largely determined by the factual and legal framework of the case of the preceding opposition proceedings; the parties have only limited scope to amend the subject of the dispute in second-instance proceedings (see Case Law of the Boards of Appeal of the EPO, 7th edition, 2013, IV.E.4.1.2 to 4.1.4). Although the filing of new submissions by a party is not precluded in appeal proceedings, a party is not entitled to have a request that could have been filed in first-instance proceedings admitted in the appeal proceedings. The submissions of late-filed requests is subject to the Board's discretion. These principles are reflected in the provisions of Art. 12(4) and 13(1) RPBA.

It follows from the above that the admissibility of the operative main and auxiliary requests has to be assessed.

2.2 As can be seen from the file history given in section III of the present decision, in the written phase of the opposition proceedings the appellant had filed several sets of claims in which the features of granted claim 7 were not present, so that the insufficiency objection in that respect was rendered moot. However, although he had been aware of the insufficiency issue, the appellant nevertheless decided not to pursue those requests but rather filed two requests again containing the features of granted claim 7, at the beginning of the oral proceedings before the opposition division. In doing so, the appellant/patent proprietor has voluntarily waived the opportunity of filing, during the opposition proceedings, the requests now pending, e.g. as further auxiliary requests, for instance

- in reply to the summons to oral proceedings of the opposition division; or

- at the beginning of the oral proceedings before the opposition division; or

- at the latest during the oral proceedings before the opposition division after the two requests then pending had been refused pursuant to Art. 83 EPC.

2.3 There is no evidence on file that the opposition division in any way restricted the possibility for the patent proprietor to file additional requests either at the beginning of the oral proceedings (both requests submitted at the beginning of the oral proceedings were admitted to the proceedings by the opposition division) or after refusal of the two requests then pending.

In the related case (EP 1 558 651) referred to by the appellant, the patent had been revoked because the pending requests did not satisfy the requirements of Art. 123(2) and 123(3) EPC. Even if it were considered, to the appellant's benefit, that that decision had motivated the patent proprietor in the present case to file new requests at the beginning of the oral proceedings before the opposition division, the patent proprietor should have been aware that the opposition division would have to assess whether or not the feature "volatile content of not greater than 500 ppm by weight" of granted claim 7 fulfilled the requirements of Art. 83 EPC, since such an objection had been raised and pursued in writing by the opponents during the whole of the proceedings. The fact that the opposition division had given a positive preliminary opinion in that respect cannot change the situation. The patent proprietor should have expected that the patent might be revoked on that ground during the oral proceedings before the opposition division, in particular considering that section 11 of the preliminary opinion made clear that its findings were not binding and could be reversed in the course of the proceedings.

Therefore, it cannot be considered that the proceedings before the department of first instance were unusual and that the appellant was prevented from filing the operative requests in the first-instance proceedings.

2.4 Furthermore, the subject-matter defined in claim 1 of the operative main request had been claimed neither in the granted patent nor in any of the appellant's previous requests, either in opposition or in appeal proceedings. Claim 1 in particular contains a preheating step (a), limited in terms of temperature, that is based on a passage of the description that was not present in any of the previous requests. The subject-matter of claim 1 of the main request therefore constitutes, already for that reason, new subject-matter that had never been examined by the first instance ("fresh case").

2.5 Apart from its late filing, the operative main request also raises complex issues in respect of its allowability.

2.5.1 Should the operative main and auxiliary requests be admitted, new issues concerning e.g. added subject-matter and clarity would have to be discussed for the first time in the appeal proceedings.

(a) Regarding added subject-matter, claim 1 of the main request corresponds to the preferred embodiment specified on page 4, lines 3-16, of the application as filed, further amended

- by insertion of the word "unreacted" before "monomer" in line 2 of claim 1; and

- by insertion of the feature "wherein the rate of flow of air through the purge vessel ? is not disrupted thereby".

The allowability under Art. 123(2) EPC of claim 1 of the main request was not addressed in the opposition proceedings and was objected to by the respondents, in particular in relation to the disclaimer. In addition, although no objection had been raised by the respondents in respect of the claims depending on said claim 1, the question would also have arisen whether or not the subject-matter defined in those dependent claims is directly and unambiguously derivable from the application as filed.

(b) Regarding clarity, claim 1 of the main request was amended (as compared to granted claim 1) inter alia by inserting the feature "wherein the rate of flow of air ? through the purge vessel". Since that feature did not form part of the granted claims, it would have had to be assessed whether or not it satisfies the requirements of Art. 84 EPC (see section 19 of the reasons of decision G 9/91).

It is questionable if that parameter is clearly defined, taking into account that the nature of the "cross-section" to be considered is not specified in the patent in suit and that, according to paragraph [0019] and to the figure of the patent in suit, the purge vessel may have varying cross-sections. It is further not indicated at which location(s) in the purge vessel that condition should be satisfied, and various reasonable possibilities could be contemplated, e.g. in the whole vessel, or only at its larger or smaller section. In that respect, no information how that parameter is to be determined is provided in the patent in suit, in particular not in the example.

2.5.2 The same considerations apply to the auxiliary request, which contains the same passages.

2.5.3 In these circumstances, the operative main and auxiliary requests constitute subject-matter to be dealt with for the first time at a very late stage of the appeal proceedings. The admission of either the main request or the auxiliary request would have put the respondents in a worse position than if the requests had been submitted before the opposition division. Should those requests now be admitted, the subject-matter of those requests would be dealt with only by the Board, meaning the loss of one instance, or the case would have to be remitted to the department of first instance. Such a prolongation of the proceedings is incompatible with procedural economy and would deprive the respondents and the public of legal certainty about the validity of the patent in suit.

2.6 For these reasons the main and the auxiliary requests are not admitted to the proceedings (Art. 12(4) and 13(1) RPBA).

3. Since none of the requests of the appellant is admissible, the appeal has to be dismissed.

4. Apportionment of costs

4.1 Under Art. 104(1) and Rule 88(1) EPC each party to the opposition proceedings shall bear the costs it has incurred, unless decided differently for reasons of equity. In that respect, Art. 16(1) RPBA mentions an abuse of procedure as a possible reason for ordering payment of costs.

4.2 The appellant's filing of new sets of claims together with the statement of grounds of appeal is in line with long-standing practice before the EPO's Boards of Appeal (see section 1.2 above). Although in the present case none of the appellant's requests was admitted to the proceedings, it cannot be concluded either that the appellant has made an abuse of the proceedings or acted in bad faith, or that extra costs have been occurred because of the appellant's conduct. Therefore, the request for an apportionment of costs is refused.