Oppositions (11) – The Reply to an Appeal

Once all grounds of appeal have been filed the parties have the right to respond.  In opposition appeals if both opponent and patentee have appealed then both have the right to reply (at the same time).  If only one party has appealed then the other party becomes a party as of right to the appeal and also has the opportunity to reply (in this case, the party that appealed has no grounds to reply to).  A party as of right has full right to reply, but cannot make requests that put them in a better position than if the other side had not appealed (other than within the limited exceptions discussed in previous article on the prohibition on reformatio in peius). 

Each party's reply should respond to the Grounds of Appeal filed by the other party, rather than addressing the Decision under appeal (other to confirm it is correct and the other party's argument is incorrect).  The likely content of the reply differs somewhat between the Patentee and Opponent. 

Patentee's reply to the Opponent's appeal

An Opponent's appeal will be requesting revocation of the patent, or maintenance in a narrower form than was approved by the Opposition Division.  The Patentee's reply to this will therefore be arguing why the Patent is valid in a broader form.  This reply will be based on the Patentee's own Grounds of Appeal and associated requests, plus any new requests the Patentee wishes to make.  However, any such new requests are restricted in the same way as requests made with the Grounds of Appeal.   

Since at the stage the Opponent filed their appeal they did not know what requests the Patentee would include in their appeal it is sometimes the case that some or all of the Opponent's Grounds of Appeal is not relevant.  More common is that the substantive issues are relevant but the request numbering has changed and so the reply should include a carefully drafted and clear cross-reference to make sure everyone is talking about the same requests. 

If the Opponent's appeal includes anything new, for example new prior art or arguments, this is the stage at which the Patentee should object to their late introduction, and also respond with any new requests to deal with the new submissions.  The primary case is almost always to request non-admission, but as a fall-back position, new requests and arguments should be made for the substantive points in case the new points are admitted.  It is also common to request conditional remittal to the opposition division if the Board of Appeal admits the new points. 

Opponent's reply to the Patentee's appeal

A Patentee's appeal will be requesting maintenance of the Patent in a broader form than was allowed by the Opposition Division.  The Opponent's reply to this will therefore explain why the broader forms set out in the Patentee's appeal are not valid and why the Opposition Division was correct.  As discussed for the Patentee, if there are any new requests this is the chance to argue for non-admission and to respond with any new arguments or prior art. 

Considerations and next steps

Due to the simultaneous filing by each party, situations can arise where one party has filed something new or unexpected in their reply which the other party had not addressed in their submissions.  Although technically there is no further opportunity to comment, it is good practice to ensure any remaining points are addressed, and it would be a very harsh Board of Appeal that excluded reasonable arguments at this stage (of course, on the assumption they had not been deliberately held back). 

After the replies are filed, the Appeal enters the "second stage of convergence" during which any changes are considered an amendment to a party's case and must be justified against stricter criteria than previous new arguments.  Changes become progressively more difficult and it is best to assume that after the reply no further new points will be admitted. 

Next week we will look at the preliminary opinion and associated oral proceedings. 

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