c) Request defining the subject of the appeal – Rule 99(1)(c) EPC 

The notice of appeal shall contain a request defining the subject of the appeal (R. 99(1)(c) EPC).

Under R. 64(b) EPC 1973, the notice of appeal had also to contain a statement identifying the decision which was impugned and the extent to which amendment or cancellation of the decision was requested. If the extent to which cancellation of the decision was requested was not expressly stated in the notice of appeal, the board would examine whether the relevant information could be determined from the totality of the appellant's submissions (see T 7/81, OJ 1983, 98 and T 32/81, OJ 1982, 225; see also T 925/91, T 932/93 and T 372/94). However, this requirement now applies to the statement of grounds and no longer to the notice of appeal and can be found, reworded, in R. 99(2) EPC.

In decision G 1/99 (OJ 2001, 381), the Enlarged Board pointed out that issues outside the subject-matter of the decision under appeal are not part of the appeal. It also noted that within the limits of what in the subject-matter of the decision under appeal adversely affects it, it is the appellant who in the notice of appeal determines the extent to which amendment or cancellation of the decision under appeal is requested.

According to the board in T 358/08, R. 99 EPC has not altered the previous law as to the requirements of either the notice of appeal or the statement of the grounds of appeal as regards the appellant's requests. R. 99(1)(c) EPC is satisfied if the notice of appeal contains a request, which may be implicit, to set aside the decision in whole or, (where appropriate) only as to part. Such a request has the effect of 'defining the subject of the appeal'. Nor is it necessary in the case of an appeal by an applicant or proprietor for the notice of appeal to contain a request for maintenance of the patent in any particular form. This is something which relates to 'the extent to which [the decision] is to be amended', and which is therefore a matter for the statement of grounds of appeal under R. 99(2) EPC. This has been confirmed in many decisions, e.g. T 844/05, T 509/07, T 9/08, T 226/09, T 689/09 and T 648/10.

The requirement in R. 99(1)(c) EPC is duly met where the notice of appeal states that "an appeal is filed". This statement defines the subject of the appeal as a request for the legal effects of the decision being contested to be reversed. The specific wording in which the patent proprietor would like its patent to be maintained can then be requested in the grounds of appeal within the meaning of R. 99(2) EPC, which must set out the reasons why the decision should be set aside or the extent to which it should be amended (T 1777/14, T 424/15).

In T 2561/11 the board summarised the established jurisprudence with regard to the meaning of the expression "a request defining the subject of the appeal" in R. 99(1)(c) EPC and stated that the boards had repeatedly construed the appeal of patent proprietors against a decision to revoke the patent as a request that the decision be set aside in its entirety, even though there had been auxiliary requests before the opposition division (see T 358/08). Similarly, in appeals against the rejection of the opposition the appeal of the opponent was construed as a request to set aside the decision under appeal and revoke the patent (see T 9/08, T 183/12 and T 256/13).

In T 620/13 the board pointed out that the notice of appeal must contain an unambiguous, clear and, most of all, explicit statement, which is recognisable as a legal statement, concerning both the identification of the impugned decision and the subject of the appeal (see also J 19/90). It was immaterial that the registrar was able to establish which decision was appealed (see also T 551/15). The board conceded that the requisite request defining the subject the appeal could be implicit. However, on a correct reading of T 358/08, what might be "implicit" was that part of the request which indicates whether the decision is to be set aside in whole or only in part. Decision T 358/08 lent no authority to the argument that there need not be any request at all. The appeal was rejected as inadmissible.