Oppositions (8) – The patentee’s grounds of appeal

If the patentee is appealing the opposition decision will have been to either revoke the patent, or maintain it in amended form. This is because if the patent was maintained as granted the patentee has not been adversely affected and so has no right of appeal.

As set out in the previous article, the appellant’s case is limited to only those documents on file during the opposition procedure. This means the appeal can only be based on the requests admitted and maintained during the opposition proceedings, except in limited situations as discussed below. This is why our previous articles have advised filing all possible requests during the opposition proceedings, even if they do not appear to be necessary. The lack of having to rely on an auxiliary request during opposition, does not qualify as a reason for admission of the request in appeal if there is a change of opinion.

The patentee’s grounds of appeal are in some ways relatively simple as the case is limited to considering the requests that were refused during the opposition proceedings. Depending on the course taken through objections and requests during the oral proceedings it may be preferable to re-arrange the order of the auxiliary requests such that they are considered in a sensible order in relation to the objections being discussed. However, the requests should be presented in an order which avoids requests which were not part of the decision being considered before requests which were part of the decision. For example, if the patentee realises that a low-ranking request that the decision did not reach because a higher-ranking request was allowed is desirable it can be tempting to present that request out of order in an attempt to improve the position. This runs the risk of the Board of Appeal refusing to consider the request until those under appeal have been considered. In extreme positions the appeal could be deemed not-filed as it does not represent an appeal, but rather a new case.

It will have to be decided, where not all objections were considered in opposition whether to request remittal for consideration of the other grounds if the decision is reversed. Remittal can be attractive for a patentee as it slows proceedings down (remembering while an appeal is pending the patent remains in force as granted), and also increases the chances for new requests to deal with objections. However, remittal is becoming less common and unless there has been no consideration of a ground it is likely the Board of Appeal will want to hear all objections, even if they have not been considered previously.

This is one area where the Grounds of Appeal should go beyond the decision under appeal such that the Board of Appeal has positive arguments for all grounds relating to a request. Remaining silent and only filing arguments when it is apparent they will be needed can lead to those arguments being less powerful, or even lost as the late addition could be deemed an amendment and not admitted. The Grounds of Appeal should address the decision directly, and explain why it is incorrect and should be reversed. Simply raising objections without reference to the decision will not be considered valid grounds.

Under limited circumstances it is possible to add new requests with the Grounds of Appeal, but it must be explained why those requests could not have been submitted earlier. The most common reason is that a new issue arose during the oral proceedings which could not have been foreseen and the patentee was unable to file appropriate requests during the proceedings. For example, the patentee may have attempted to draft a new claim during the oral proceedings following a negative decision from a new issue, but without seeing the full reasons in the written decision was unable to draft a suitable request. Very occasionally, the written decision may cast a known issue in a different light and present an opportunity to file a new request. In such situations the Grounds of Appeal are the first chance for the patentee to address the new issues and so a request should be permitted.

It is clear that a surprising decision, on an issue that had been clearly present in the case prior to the oral proceedings, is not a ground for admitting a request at this stage. The patentee should have been given an opportunity to attend to a surprising decision during opposition, and if they did not seize that opportunity the request will not be admitted if it is then filed with the Grounds of Appeal. Care must therefore be taken when something surprising happens during an opposition to ensure the opportunity for a new request is taken at that time.

Where new requests are filed they must be accompanied by an explanation of why they could not have been filed earlier, why they cure objections in the decision, and why they do not raise further issues which would lead to expansion of the case. This last point has become very important under the new rules of procedure and requests can, and have been, refused because the patentee did not explain why their amendment did not raise new issues. The justification should therefore explain why the request meets all requirements of the EPC, not only those in the decision it seeks to address.

Next week we will take a diversion from grounds of appeal to consider a particular issue for a non-appealing patentee - reformatio in peius.

This article is a part of our EPO Practice and Peculiarities series. Click here to explore.