3.2.3 Opposition appeal proceedings
No part of a patent's subject-matter (e.g. individual claims) not opposed within the nine-month time limit can be reviewed in either opposition or appeal proceedings. The opponent's statement under R. 76(2)(c) EPC (R. 55(c) EPC 1973) establishes the extent to which the patent is contested and thus the formal competence of the opposition division or board of appeal. The only exception to this principle concerns an opposition explicitly directed only to the subject-matter of an independent claim. In such a case, subject-matter covered by claims which depend on the independent claim can also be examined as to patentability (see e.g. G 9/91, OJ 1993, 408; see also T 323/94).
According to T 896/90, detailed grounds for opposition for a single granted independent claim do not mean that only that part of the patent is being contested, if the opponent has indicated that he wants the whole patent revoked. However, in T 737/92 (in which only arguments against process claims and not against composition claims were submitted) the board found that an opposition was filed only to the extent that it was substantiated (see also T 318/01).
Where two opponents lodge appeals contesting different sets of claims and one subsequently withdraws its appeal, it becomes a party as of right under Art. 107 EPC 1973 and the other opponent becomes the sole appellant. The scope of the appeal is defined by the latter's request, which the non-appealing party may not exceed and which binds the board (T 233/93).
In T 653/02 it was held that a board has no competence to examine a newly formulated claim derived by combination of granted claim 1 with a sub-claim not being within the extent to which the patent had been opposed; this did not fall within the exception allowed by G 9/91 (OJ 1993, 408). In T 646/02 the board found that the case at issue differed from the facts before the board in T 653/02, in that the subject-matter not opposed was described in the patent and was part of the independent claim as granted but was not itself the subject-matter of a dependent claim of the patent as granted. Whether or not the board had competence to examine depended, however, only on whether the patent was clearly restricted to a subject-matter not covered by the notice of opposition. This was done in T 646/02 by restriction to the subject-matter of the deliberately excluded dependent claim and, in the case at issue, by restriction to deliberately excluded variants of the invention. The board held that the exception in G 9/91 was not therefore applicable in the case before it either, since it was applicable only to subject-matter implicitly covered by the notice of opposition and not to those explicitly excluded.
In T 364/18 the appellant (opponent) expressly requested in the notice of opposition revocation of claims 1-5, 8, 9, 11, 15-17, 19 and 20. This request was repeated on appeal. The board saw in the above an express statement that the patent was opposed and the decision was appealed only in as far as the claims mentioned were concerned, which thus defined, respectively, the extent of opposition according to R. 76(2)(c) EPC, and the extent to which decision was to be amended according to R. 99(2) EPC. In accordance with the principle of ne ultra petita the board saw itself limited to examining the patent only for the claims opposed. The auxiliary request, however, was directed to the subject-matter of unopposed granted claims 6, 7, 10, 12 to 14 and 18, in the form of independent claims 1 to 7 which combined the features of respective ones of these claims with granted claim 1. As the auxiliary request was directed to those unopposed subject-matters, and the board had no power to examine such subject-matter, the patent was to be maintained in this limited form.