c) Rule 99(1)(c) EPC 

– Definition of the subject of appeal

The notice of appeal shall contain a request defining the subject of the appeal (R. 99(1)(c) EPC).

Under R. 64(b) EPC 1973, the notice of appeal had also to contain a statement identifying the decision which was impugned and the extent to which amendment or cancellation of the decision was requested. If the extent to which cancellation of the decision was requested was not expressly stated in the notice of appeal, the board would examine whether the relevant information could be determined from the totality of the appellant's submissions (see T 7/81, OJ 1983, 98 and T 32/81, OJ 1982, 225; see also T 925/91, T 932/93 and T 372/94). However, this requirement now applies to the statement of grounds and no longer to the notice of appeal and can be found, reworded, in R. 99(2) EPC.

In decision G 1/99 (OJ 2001, 381), the Enlarged Board of Appeal pointed out that issues outside the subject-matter of the decision under appeal are not part of the appeal. It also noted that within the limits of what in the subject-matter of the decision under appeal adversely affects it, it is the appellant who in the notice of appeal determines the extent to which amendment or cancellation of the decision under appeal is requested.

According to the board in T 358/08, R. 99 EPC has not altered the previous law as to the requirements of either the notice of appeal or the statement of the grounds of appeal as regards the appellant's requests. R. 99(1)(c) EPC is satisfied if the notice of appeal contains a request, which may be implicit, to set aside the decision in whole or, (where appropriate) only as to part. Such a request has the effect of 'defining the subject of the appeal'. Nor is it necessary in the case of an appeal by an applicant or proprietor for the notice of appeal to contain a request for maintenance of the patent in any particular form. This is something which relates to 'the extent to which [the decision] is to be amended', and which is therefore a matter for the statement of grounds of appeal under R. 99(2) EPC. This has been confirmed in many decisions, e.g. T 844/05, T 509/07, T 9/08, T 226/09, T 689/09 and T 648/10.

The requirement in R. 99(1)(c) EPC is duly met where the notice of appeal states that "an appeal is filed". This statement defines the subject of the appeal as a request for the legal effects of the decision being contested to be reversed. The specific wording in which the patent proprietor would like its patent to be maintained can then be requested in the grounds of appeal within the meaning of R. 99(2) EPC, which must set out the reasons why the decision should be set aside or the extent to which it should be amended (T 1777/14, T 424/15).

In T 2561/11 the board summarised the established jurisprudence with regard to the meaning of the expression "a request defining the subject of the appeal" in R. 99(1)(c) EPC and stated that the boards had repeatedly construed the appeal of patent proprietors against a decision to revoke the patent as a request that the decision be set aside in its entirety, even though there had been auxiliary requests before the opposition division (see T 358/08). Similarly, in appeals against the rejection of the opposition the appeal of the opponent was construed as a request to set aside the decision under appeal and revoke the patent (see T 9/08, T 183/12 and T 256/13).

In T 620/13 the board pointed out that the notice of appeal must contain an unambiguous, clear and, most of all, explicit statement, which is recognisable as a legal statement, concerning both the identification of the impugned decision and the subject of the appeal (see also J 19/90). It was immaterial that the registrar was able to establish which decision was appealed (see also T 551/15). The board conceded that the requisite request defining the subject the appeal could be implicit. However, on a correct reading of T 358/08, what might be "implicit" was that part of the request which indicates whether the decision is to be set aside in whole or only in part. Decision T 358/08 lent no authority to the argument that there need not be any request at all. The appeal was rejected as inadmissible.

– Case law on Rule 64(b) EPC 1973

The decisions below concern the application of R. 64(b) EPC 1973, in particular the requirement concerning the extent to which amendment or cancellation of the decision was requested in the notice of appeal. (This request, reworded, now forms part of the statement of grounds; R. 99(2) EPC).

It was sufficient to fulfil the requirements of R. 64(b) EPC 1973 if the extent of the request made on appeal could be inferred interpreting the notice of appeal in an objective way (T 85/88, see also e.g. T 32/81, OJ 1982, 225; T 7/81, OJ 1983, 98; T 1/88, T 533/93, T 141/95 and T 308/97).

T 631/91, T 727/91 and T 273/92 confirmed the principle that the appeal's scope could be ascertained from the appellant's overall submissions if the request filed in the appeal proceedings did not make this clear. Since no indication was made to the contrary in the appellant's submissions, the board of appeal assumed that he wished to file a request in the appeal proceedings along the same lines as that filed in the opposition proceedings (see also T 925/91, OJ 1995, 469; T 194/90 and T 281/95).

The wording "... we hereby file notice of appeal to the decision ..." was construed in T 632/91 as a request to set aside entirely the decision under appeal and to grant a patent on the basis of the documents of the European patent application to which the decision under appeal referred. This was followed in T 49/99 and T 1785/06). See also T 9/08 for a corresponding application under R. 99(2) EPC.

If the only ruling in an opposition division decision was that the patent was revoked, a statement by the patent proprietor that he was appealing against the decision was invariably tantamount to his stating that he wished and hence requested that the decision be set aside in its entirety, because setting aside had to be unitary. Hence the content of the notice of appeal was what R. 64(b) EPC 1973 demanded as one of its requirements for an admissible appeal, i.e. a statement identifying the extent to which cancellation of the decision was requested (T 407/02). This has also been applied under R. 99 EPC; see T 912/08, T 624/09, T 689/09 and T 1188/09.

However, where the decision under appeal related to more than one different legal issue, the statement identifying the extent of the appeal as prescribed by R. 64(b) EPC 1973 had to make it clear which issue(s) of the decision were also subjects of the appeal (T 420/03). As the notice of appeal was completely silent on the apportionment of costs and there was nothing which indicated that the decision should be set aside in its entirety, this issue was not within the extent of the appeal.