C. Opposition procedure

Catchword: 

In a case where the patent is not opposed in its entirety, the opposition being directed at certain claims only, and where the Opposition Division decides that all of the proprietor's requests in relation to the opposed claims must fail, only the unopposed claims, which are not part of any opposition proceedings, are left standing.  Hence, provided the requirements of Rule 82(1) EPC are met (either during oral proceedings or, in a written procedure, by means of a separate communication), the patent may be maintained on the basis of the unopposed claims, irrespective of whether the proprietor has filed an explicit request for this during the proceedings. Such a request would, in fact, be superfluous, since the unopposed claims have been granted and are not the subject of any opposition. The unopposed claims of the granted patent are therefore always available to the proprietor as the minimum basis on which the patent may be maintained (Reasons, point 5.2).

Catchword:

Prima facie allowability under Article 123(2) EPC of a late filed amended claim request may be a valid criterion to be used by the opposition division when deciding on the admittance of this claim request. However, using this criterion, to object for the first time at oral proceedings to a feature of the late-filed claim request that was already present in higher ranking claim requests and had never been objected to before, not even when deciding on the allowability or admittance of those higher-ranking claim requests, goes against the principles of fairness and good faith (see point 2.6.11 of the reasons).

Catchword:

1. An opposition division's rejection of a request for extension of the time limit indicated in its communication under Rule 79(1) EPC does not terminate the opposition proceedings. Therefore, a patent proprietor is in a position to respond to the notice of opposition beyond the expired time limit or, at least, request the rejection of the opposition as well as oral proceedings. The patent proprietor must anticipate that an opposition division may issue its decision after expiration of the time limit (see Reasons 4.5, 4.6 and 4.9).

2. There is no legal basis for a duty on the part of the opposition division to notify the patent proprietor in advance of its intention to reach a decision, even if that decision concerns the revocation of the patent (see Reasons 4.8, 4.10 and 4.11).

3. If a patent proprietor chooses not to file any submissions during the opposition proceedings but to present them only with its statement of grounds of appeal, this amounts to bringing an entirely fresh case in appeal proceedings. This is at odds with the primary object of the appeal proceedings to review the decision under appeal in a judicial manner. Consequently, a board has the discretion under Article 12(4) RPBA 2007 not to admit the patent proprietor's defence submissions into the appeal proceedings. This does, however, not necessarily lead to revocation of the patent. The decision under appeal is still to be reviewed by the board, which might overturn the impugned decision, for example if it is not convinced by the reasons given by the opposition division or in the event of a substantial procedural violation (see Reasons 5.5 and 5.6).

Catchword:

1.) Article 114(2) EPC provides a legal basis for disregarding claim requests which are not submitted in due time (Reasons 4.5.1-4.5.11). 2.) A claim request which is filed in opposition proceedings after the date set under Rule 116(1) EPC is not submitted in due time within the meaning of Article 114(2) EPC (Reasons 4.6.1-4.6.10). 3.) Rule 116(2) EPC does not limit the Opposition Division's discretionary power under Article 114(2) EPC and Rule 116(1) EPC. As a rule, this discretionary power does not depend on the contents of the Opposition Division's communication under Rule 116(1) EPC. However, if the Opposition Division invites the patent proprietor to file an amended claim request to address a specific objection and the patent proprietor complies with this invitation by filing the required amendments by the date set under Rule 116(1) EPC, the Opposition Division's discretion not to admit that claim request may effectively be reduced to zero (Reasons 4.7.1-4.7.8).

Catchword:
The Boards of Appeal may review discretionary decisions. There are, however, limits on the extent of review that reflect the discretion accorded to the deciding body. In the present case, the Opposition Division decided to consider document D8 and the review of this decision is a primary object of the appeal proceedings (Article 12(2) RPBA 2020) - see Reasons 1 - 9.