Oppositions (10) – Opponent’s grounds of appeal

If the Opponent has filed an appeal the Opposition Division will have found the patent either valid as granted, or valid in amended form. If the patent was revoked then the Opponent was not adversely affected by the decision and so they do not have a right to appeal.

An Opponent’s appeal is based on the prior art and arguments that were active at the time the decision was taken, rather than all prior art and arguments that were filed. This is an important subtlety as there are situations in which arguments are accidentally dropped during the opposition proceedings and cannot then be used in appeal. The most common example is where a document is initially used for novelty, but ultimately the discussion is regarding inventive step. If the opponent does not make clear at the oral proceedings that their novelty objections are maintained, they may be lost for appeal. Generally this does not have a significant effect as the good arguments will be relied upon during the oral proceedings, but occasionally the case can develop in a way which re-emphasises the importance of an argument which has not been discussed since early in the proceedings.

An Opponent-Appellant will only be allowed to add new documents or arguments in their appeal if they could not have been filed earlier. Typically this only occurs if the Patentee files a new request during the oral proceedings which raises new objections or changes the prior art position, and could not be addressed on the day. With tighter controls on new requests at late stages in opposition such situations should be becoming less common. Very rarely new prior art will become available only after the opposition decision, but that will only be admitted if there are good reasons (merely performing a new search will not be sufficient).

The main line of argumentation in the Opponent’s appeal should be directed to the request found valid by the opposition division. As set out in our previous articles the arguments must set out why the opposition division was incorrect to conclude the request was valid, rather than simply repeating previous objections.

The Opponent-Appellant then has a choice whether to present further arguments regarding other requests which were on file during the opposition. Such requests may be ones that were decided in the Opponent’s favour (ie refused), or ones that have not yet been considered. In either case, no decision was issued on those requests which is adverse to the opponent, so submissions on such requests do not need to be made in the grounds of appeal as there is no appeal available. The strictly-correct place for such submissions is the reply to the Patentee’s appeal since by that stage the basis of any appeal by the Patentee will be known. It is possible they will not pursue some or all of the requests in which case they do not need to be addressed. My personal preference is to include arguments on points relating to decided requests which went against the opponent, and also full arguments on any unconsidered requests. Although such arguments may never be read in that form, I feel this presents a self-contained comprehensive case which makes the overall case clearer. Unless the Patentee attempts to file new requests it is likely that no expansion of the case beyond the grounds of appeal will be permitted. It is therefore essential they include all documents and arguments on which you may wish to rely. In particular, ensure all possibly relevant prior art is referenced and supported by arguments on all relevant grounds.

A final point for consideration is whether to request remittal to the opposition division for further consideration of any new points. For example, remittal can be requested for a ground which was never considered in the first opposition proceedings (eg the patent was revoked on added matter and novelty was not considered). Although remittal is now reserved for special cases, and the appeal board may decide not to remit, it is certain that if remittal is not requested at an early stage it will not be possible later on.

Next week we will look at the parties’ reply to the other side’s grounds of appeal.

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