Kamer van beroep kan delen van de aangevochten beslissing herzien die niet door de appellant zijn aangevochten

The view of the Board of Appeal

The Board found the scope of the appeal uncommonly restricted and opined that it would have been prudent for the OA to address in its grounds at least some of the aspects regarding added matter or patentability of the OD’s decision. In the grounds, the OA instead focused extensively on D26. Moreover, the parts of D26 cited by the OA were missing from the decision under appeal and were considered to relate to  figures and parts of D26 linguistically distant from each other, so that the Board had to spend a considerable amount of time in evaluating the relevance of D26.

The Board assessed D26 as not being more relevant than D18 which was already in the proceedings, because relevant information to be derived from D26 was already present in D18. So, for the sake of procedural economy, the Board found it more appropriate to examine inventive step starting from D18 as already dealt with in OD’s decision. The Board concluded in their preliminary opinion that claim 1 of the patent did not involve an inventive step over D18.

In so doing, the Board considered that, on the one hand, the Board may have contributed to making the circumstances of the appeal case "exceptional", but on the other hand, upheld the EPO's responsibility towards the public not to maintain invalid patents and simplified the proceedings.

The Proprietor’s view

The Proprietor objected that OA had only appealed that claim 1 lacked novelty over D26. Therefore, the Board should not have extended the scope of the appeal proceedings to attacks that were only part of the opposition proceedings but not of the appeal proceedings. Moreover, even when the Board would do so, the Proprietor would find it appropriate for the Board to “confine the appeal proceedings to the grounds set out by the opponent in its grounds of appeal”, referring to Case Law of the Boards of Appeal, Tenth Edition, 2022, V.A.3.2.3 i) and V.A.3.3.1, and in particular to decisions T 1799/08 and T 182/89. Further referring to Art. 12(2) RPBA 2020, the Proprietor argued that there was "no requirement for the Board to review any aspects of the Decision outside the scope of the case put forward by the appellant".

The Board’s response 

The Board answered that T 1799/08 related to a case in which the opponent remained passive, so that the competent board could justify not investigating a ground not properly substantiated by the opponent. However, in the present case, OA was not passive and the Board did not need to investigate any ground not properly substantiated because OD’s decision addressed several grounds in detail so that the Board could conduct a judicial review under Art. 12(2) RPBA 2020. Moreover, according to T 182/92, headnote IV, Art. 114(1) EPC "should be interpreted as enabling the EPO to investigate fully the grounds of opposition which have been both alleged and properly supported as required by Rule 55(c) EPC [1973, now Rule 76(2)(c) EPC 2000]".

The Board rejected the Proprietor’s conclusion that the Board should or could not review parts of the appealed decision other than those challenged by OA, for two reasons.

First, the Board could not see any legal basis for such limitation, neither in the EPC nor in the RPBA. The Board argued that Art. 114(1) EPC implied that the Board of Appeal should not be restricted to what parties provided and that pursuant to Art. 101(3) EPC, the Board should fully examine whether the patent as amended complies with the EPC. Referring to G 9/91 and G 10/91, Reasons 19, the Board held that the only limitation was that it cannot introduce or admit a fresh opposition ground without the consent of the Proprietor. 

Second, according to the Board, a limitation as put forward by the Proprietor would contradict the discretionary power of the Board to admit amendments to a party’s case. On the one hand, the Board could not review parts of an appealed decision that were not challenged by an appellant. On the other hand, if a party were to amend its case during appeal proceedings by, for example, supplementing a novelty objection with an inventive-step attack, the Board would have discretion to admit such an amendment, for example if inventive step was already relied upon during opposition proceedings. Such a discretionary power would be in tension with the assumption that a filed appeal would define - in a binding and definitive manner - the scope of the Board’s review under Art. 12(2) RPBA 2020.

The Board did not take a final position between the decision of an opponent to limit the appeal to a specific part of the impugned decision on the one hand and the Board's powers and public interest in the revocation of invalid patents on the other hand.

Admittance of party’s requests

The Proprietor submitted auxiliary request 1 in reply to the Board’s preliminary opinion that claim 1 was not inventive, justifying this late-filed request by arguing that the preliminary opinion contained new objections.

The Board found that the presence of a new objection was not in itself sufficient to justify the admittance of a new auxiliary request. However, the Board considered the circumstances of the appeal to be “exceptional” within the meaning of Art. 13 RPBA 2020, because the Board would have had to intervene less in its preliminary opinion if the Appellant had addressed some of the substantive aspects of the contested decision in its grounds of appeal. 

The Board also admitted document D26 into the proceedings as a legitimate reaction of the Appellant to the admittance of auxiliary request 1 submitted by the Proprietor.

Decision of the Board

The Board considered the admittance into the proceedings of auxiliary request 1 and document D26 to represent a considerable change of facts and claim requests underlying the appeal. Moreover, the parties had no objections against remitting the case to the OD. Therefore, the Board decided to set the decision under appeal aside and to remit the case to the OD for further prosecution.