T 0854/02 (Use of taxol/BRISTOL-MYERS SQUIBB) 14-10-2002

1. In this decision the Board will for convenience refer to OIII as "the appellant" although, in its guise as a "Notice of Requests", the document contemplates OIII as a prospective respondent.

2. As a so-called "Notice of Requests", the appellant's document is of no effect for the following reasons.

2.1. First, by prefacing its list of requests with the words "on appeal by the patentee, should there be one", the appellant clearly makes its requests conditional on an appeal being filed by the patentee. Not only has that condition not been fulfilled, since no such appeal has been filed within the permitted time, but, since an appeal cannot be filed as an auxiliary request and procedural declarations by parties may not be made conditionally (see J 16/94, OJ EPO 1997, 331 and J 27/94, OJ EPO, 1995, 831), it follows that mere conditional requests outside any pending proceedings cannot be entertained.

2.2. Second, the appellant's requests amount to an anticipatory cross-appeal but, as is well-known, cross-appeals are not possible before the Boards of Appeal (save in the sense that appeals may be filed by parties on both sides of opposition proceedings which end in an interlocutory decision to maintain a patent in amended form). Cross-appeals, such as exist in some other legal systems, in the sense of appeals only filed in reaction to and within a specified time after another party's appeal, are not possible. Any adversely affected party wishing to appeal must do so within the prescribed time limit of two months (Articles 107 and 108 EPC).

3. The appellant also designates the document it has filed as a Notice of Appeal. The appeal is inadmissible for the following reasons.

3.1. First, although the notice of appeal has been filed in due time and the appeal fee has been paid (Article 108 EPC), the provision of Article 107 EPC, which limits the right to appeal to parties adversely affected by a decision, is not satisfied. In the present case the decision subject to appeal is the decision of the Opposition Division to revoke the patent in suit under Article 102(1) EPC. Thus the decision was in favour of the appellant who, therefore, was not adversely affected. The appellant tacitly acknowledges this by its words "in the event that OIII is held to be adversely affected by the decision (and thus has locus to appeal)" - the appellant is not adversely affected and thus has no locus to appeal. Further, if by those words the appellant sought to file a conditional appeal, such an appeal is per se inadmissible (see the cases cited in paragraph 2.1 above). An appellant cannot make the filing of a Notice of Appeal conditional on the assessment of an admissibility requirement which can only be made by the Board after the Notice of Appeal has actually been filed. To do so would be tantamount to asking the Board whether or not an appeal is possible - the Board cannot give advice or opinions to parties, it can only make decisions on appeals once filed.

3.2. Second, it appears that the appellant does not really seek to challenge the decision of the Opposition Division (i.e. revocation of the patent) but the reasons within the decision. In particular, the appellant wishes to see the patent found invalid under Articles 123(2), 83, 52 (2) and 52(4) EPC, in addition to Articles 52(1) and 54(1) EPC. In doing so the appellant misunderstands the nature and purpose of opposition appeal proceedings which are not to re-examine a patent but to decide whether or not a first instance decision is correct. Oppositions challenge patents, appeals challenge decisions.

4. Accordingly, the Board has no alternative but to dismiss the present appeal as inadmissible. It is therefore unnecessary to consider the appellant's individual requests including that for oral proceedings which, in any event, was only made in the ineffective "Notice of Requests".

5. There is no request by the appellant for reimbursement of the appeal fee and indeed such a request would be inconsistent with the requests it seeks to make. However, for the avoidance of doubt, the Board emphasises that its decision is that the appeal is inadmissible and not that the appeal is deemed not to have been filed (see "Case Law of the Boards of Appeal of the European Patent Office", 4th ed. 2001, page 552, section 15.1, 5th paragraph). Accordingly, no question of reimbursement of the appeal fee can arise.

6. The Board has no need to consider the proprietor's request for an apportionment of costs since, the appeal being inadmissible ab initio, the conditions for such an apportionment (namely the taking of evidence or oral proceedings) cannot, however those conditions might be interpreted, apply in the present case.