Résumé de EPC2000 R 099 pour la décision T1828/19 du 14.03.2023

In T 1828/19 the board recalled that R. 99(1)(c) EPC requires that the notice of appeal contain a request defining the subject of the appeal. R. 99(2) EPC required that the appellant indicate in the statement of grounds of appeal the reasons for setting aside the decision impugned and the facts and evidence on which the appeal is based. In the notice of appeal, the appellant (patent proprietor) had requested that the decision under appeal be set aside, and identified the appealed decision. It had also requested that the patent be maintained "as amended during oral proceedings". This request defined the subject of the appeal, as required by R. 99(1)(c) EPC. The opposition division had revoked the patent because it had considered the claimed invention not sufficiently disclosed for it to be carried out by a skilled person. In the grounds of appeal, the appellant had given reasons why the opposition division's conclusion was to be considered incorrect, as required by R. 99(2) EPC. The appellant's main request could be identified without any doubt, namely that the decision be set aside and the patent maintained as granted. The appeal was thus admissible. In its notice of appeal, the appellant had requested that "the decision be set aside and the patent maintained as amended during oral proceedings". In the statement of grounds of appeal, however, the appellant had requested that the decision be set aside and the patent be maintained "as granted or in amended form". The respondent (opponent) had argued that the appeal was inadmissible solely in view of this discrepancy. The board disagreed with the respondent. The appealed decision had a single legal effect: revocation of the patent. The appellant had clearly requested in its notice that this decision be set aside; this was the subject of the appeal. There was no legal basis for the assumption that the request in the notice of appeal "that the patent be maintained as amended in the oral proceedings" was a withdrawal of any other request pending before the opposition division and forming the basis of the impugned decision, thus irrevocably limiting the scope of the appeal by excluding from it the patent as granted. It was settled case law that, as required by R. 99(2) EPC, the proprietor needed to specify the scope of its request for maintenance of the patent only in the statement of grounds of appeal. This was implied by the wording of R. 99(2) EPC: "the appellant shall indicate ... the extent to which [the decision impugned] is to be amended". The grounds of appeal did not need to be limited by the requests in the notice of appeal. There was no reason why the legal consequence of a discrepancy between the notice and the grounds should be the inadmissibility of an appeal. R. 99 EPC was silent in this respect, and no other relevant legal provision was known to the board that would stipulate such a legal effect. Nor was the board aware of any applicable case law to that effect. The respondent had argued that the requests in the statement of grounds of appeal did not restrict the original requests in the notice of appeal but went beyond them. However, the board failed to find any legal basis for the inadmissibility of an appeal as a consequence of a change in the scope of claim requests between the notice of appeal and the statement of grounds of appeal. In the absence of any legal basis that would prohibit such a change of scope, the appellant was free not to define its claim requests until later, within the time limit for filing the grounds of appeal as stipulated by Art. 108 EPC, last sentence. Thus, no procedural error was apparent to the board, let alone an error that would result in inadmissibility of the appeal. The respondent had also argued that the appellant's requests were unclear and that some were not sufficiently reasoned. These arguments too failed to convince the board that the appeal should be held inadmissible.