UK: Clarification Of The Requirements Concerning Notices Of Appeal At The EPO

Last Updated: 6 March 2017
Article by Nathan Jones

In decision T 2561/11, the EPO Board of Appeal found an Appeal to be admissible despite certain omissions in the Notice of Appeal. In particular, the Notice of Appeal failed to mention the Appellant's name and address, and was alleged not to contain a request defining the subject of the Appeal, both requirements of Rule 99 EPC.

European patent EP1789717, relating to a coaxial coupling for the connection and disconnection of fluid lines, had been maintained in amended form following an interlocutory decision of the Opposition Division.

The Notice of Appeal filed by the opponent's representative was headed "Appeal against Opposition", giving the patent number, the words "in the name of", the proprietor name, and the representative's file reference. The document contained the statement "we are appealing against the decision of the Opposition Division of 19 October 2011".

The admissibility of this appeal was called into question by the patent proprietor (who had also appealed). The proprietor argued that the appeal did not comply with Article 108 EPC, in particular because the requirements laid out in Rule 99 EPC had not been fulfilled.

With regard to the failure to state the appellant's name and address, the Board considered whether the identity of the appellant was in doubt.

The opponent's representative used the same file reference for the opposition and the Notice of Appeal. This was seen as evidence of a continuity between the representative's work in representing the opponent before the Opposition Division, and the appeal now before the Board. The Board considered whether alternative scenarios could reasonably be entertained.

For instance, the Board considered whether it was possible that the representative had switched sides, to take up representation of the proprietor on appeal from the opposition and had mistakenly used the opponent's file reference on the appeal. This was considered unlikely, particularly as there was no indication of a change of representative in the case file.

The Board also looked at whether it was possible that the Notice of Appeal had been filed on by the representative pro se, or on behalf of a third party. Both of these scenarios were also considered unlikely as, in each case, the appeal would be inadmissible because neither the representative, nor any other third party, would have been entitled to file an appeal. The Board of Appeal's reasoning on this point rested on a central assumption that the representative would not knowingly file an appeal in the name of someone who was not entitled to be an appellant. That is, consistent with other case law, the Board assumes that representatives know the law. So, as far as the Board was concerned, the only reasonable assumption to make was that the representative was still representing the opponent, even though this was not explicitly stated in the Notice of Appeal.

The Board was therefore satisfied that there was no reasonable doubt as to the identity of the appellant. Established case law allowing correction of the appellant's name and address in the Notice of Appeal was also held to apply to omission of these details. So, while the law states that an appeal must include the name and address of the appellant, and this particular appeal was, explicitly at least, non-compliant, the Board saw the provision through the eyes of a reader "willing to understand" and, with this generous outlook, it was satisfied that such a reader would have understood who the appellant was.

The Board then considered the alleged failure to include "a request defining the subject of the Appeal", in doing so clarifying the requirements of such a request in accordance with Rule 99 EPC. The Board acknowledged that the opponent could have either requested revocation of the patent, or maintenance of the patent but with smaller scope (as a lower ranking auxiliary request was not examined during opposition proceedings).

Nevertheless, the Board held that, according to established jurisprudence, an opponent's appeal against the rejection of an opposition is construed as a request to set aside the decision under appeal and revoke the patent, even if several requests of the proprietor are on file. Similarly, a proprietor's appeal against a decision to revoke a patent is construed as a request that the decision be set aside in its entirety, even if several requests are on file. In this case, the Board therefore construed the Notice of Appeal as comprising a request that the decision be set aside in its entirety.

Thus, the appeal was found to be admissible. In comparison with this decision on admissibility, the final outcome of the appeal is perhaps of less interest. However, the appeal by the opponent was ultimately successful – the patent was revoked in its entirety. So, the errors in the appeal documentation, which led to the admissibility being put in doubt, might have proved very costly had the Board seen the admissibility situation differently.

Whilst the failure to explicitly identify the appellant or, allegedly, to include a request defining the subject of the appeal, was not ultimately detrimental to admissibility in this case, it would have led to significant additional cost to both parties in addressing the point before and during the proceedings. As decisions of the Boards of Appeal do not create strictly binding precedent, we do not believe that this case establishes a new, more relaxed interpretation of Rule 99 EPC. Thus, we believe it would not be prudent to rely on this decision as establishing a change in procedure. At least, there is no reason to change existing best practice of identifying the appellant and the extent of the appeal, thereby leaving the Board in no doubt as to the admissibility of the appeal.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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