Case law - opposition Flashcards
G1/86 Re-establishment of rights of opponent
Article 122 EPC is not to be interpreted as being applicable only to the applicant and patent
proprietor. An appellant as opponent may have his rights re-established under Article 122 EPC if he has failed to observe the time limit for filing the statement of grounds of appeal.
G4/88 Transfer of opposition
An opposition pending before the European Patent Office may be transferred or assigned to a third party as part of the opponent’s business assets together with the assets in the interests of which the opposition was filed.
See also G2/04, below.
G1/91 Unity in opposition – legally irrelevant
Unity of invention (Article 82 EPC) does not come under the requirements that a European patent and the invention to which it relates must meet under Article 102(3) EPC when the patent is maintained in amended form. It is consequently irrelevant in opposition proceedings whether the European patent as granted or amended meets the requirement of unity.
G9/91 Extent of power to examine opposition
The power of an Opposition Division or a Board of Appeal to examine and decide on the
maintenance of a European patent under Articles 101 and 102 EPC depends upon the extent to which the patent is opposed in the notice of opposition pursuant to Rule 76(c) EPC. However, the subject matter of claims depending on an independent claim that falls in opposition or appeal proceedings may be examined as to patentability even if they have not been explicitly opposed, provided their validity is prima facie in doubt on the basis of already available information.
G8/93 Withdrawal of opposition without withdrawal of appeal
The withdrawal of an opposition by an opponent, who is the sole appellant, immediately and
automatically terminates the appeal proceedings, irrespective of whether the patent proprietor
agrees to termination of those proceedings and even if in the Board of Appeal’s view the
requirements under the EPC for maintaining the patent are not satisfied.
G9/93 Opposition by patent proprietor
A European patent cannot be opposed by its own proprietor.
G1/95 Fresh grounds for opposition
Where a patent has been opposed on the grounds set out in Article 100(a) EPC, but the opposition has only been substantiated on the grounds of lack of novelty and lack of inventive step, the ground of unpatentable subject-matter based upon Articles 52(1) and (2) EPC is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee.
See G10/91, above, for the criteria to be applied in determining whether new grounds may be
introduced.
G7/95 Fresh grounds for opposition
Where a patent has been opposed under Article 100(a) EPC on the ground that the claims lack an inventive step in view of documents cited in the notice of opposition, the ground of lack of novelty based upon Articles 52(1) and 54 EPC is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee. However, the allegation that the claims lack novelty in view of the closest prior art document may be considered in the context of deciding on lack of inventive step.
G3/97 and G4/97 Opposition on behalf of a third party
An opposition is not inadmissible purely because the person named as opponent according to Rule 77(a) EPC is acting on behalf of a third party.
Such an opposition is, however, inadmissible if the involvement of the opponent is to be regarded as circumventing the law by abuse of process. Such a circumvention of the law arises, in particular, if the opponent is acting on behalf of the patent proprietor, or if the opponent is acting on behalf of a client in the context of activities which, taken as a whole, are typically associated with professional representatives, without possessing the relevant qualifications required by Article 134 EPC.
However, a circumvention of the law by abuse of process does not arise purely because a
professional representative is acting in his own name on behalf of a client or because an opponent with either a residence or principal place of business in one of the EPC Contracting States is acting on behalf of a third party who does not meet this requirement.
In determining whether the law has been circumvented by abuse of process, the principle of the free evaluation of evidence is to be applied. The burden of proof is to be borne by the person alleging that the opposition is inadmissible. The deciding body has to be satisfied on the basis of clear and convincing evidence that the law has been circumvented by abuse of process.
The admissibility of an opposition on grounds relating to the identity of an opponent may be
challenged during the course of the appeal, even if no such challenge was raised before the
opposition division.
G3/99 Admissibility of joint opposition or joint appeal
An opposition filed in common by two or more persons, which otherwise meets the requirements of Article 99 EPC and Rules 3 and 76 EPC, is admissible on payment of only one opposition fee.
If the opposing party consists of a plurality of persons, an appeal must be filed by the common
representative under Rule 151 EPC. Where the appeal is filed by a non-entitled person, the Board of Appeal shall consider it not to be duly signed and consequently invite the common representative to sign it within a given time limit. The non-entitled person who filed the appeal shall be informed of this invitation. If the previous common representative is no longer participating in the proceedings, a new common representative shall be determined pursuant to Rule 151 EPC.
In order to safeguard the rights of the patent proprietor and in the interests of procedural efficiency, it has to be clear throughout the procedure who belongs to the group of common opponents or common appellants. If either a common opponent or appellant (including the common representative) intends to withdraw from the proceedings, the EPO shall be notified accordingly by the common representative or by a new common representative determined under Rule 151(1) EPC in order for the withdrawal to take effect.
G2/04 Transfer of opposition
Status as an opponent cannot be freely transferred. A legal person who was a subsidiary of the
opponent when the opposition was filed and who carries on the business to which the opposed
patent relates cannot acquire the status as opponent if all its shares are assigned to another
company.
If, when filing an appeal, there is a justifiable legal uncertainty as to how the law is to be interpreted in respect of the question of who the correct party to the proceedings is, it is legitimate that the appeal is filed in the name of the person whom the person acting considers, according to his interpretation, to be the correct party, and at the same time, as an auxiliary request, in the name of a different person who might, according to another possible interpretation, also be considered the correct party to the proceedings.
G3/14 Examination of clarity objections
In considering whether, for the purposes of Article 101(3) EPC, a patent as amended meets the
requirements of the EPC, the claims of the patent may be examined for compliance with the
requirements of Article 84 EPC only when, and then only to the extent that, the amendment
introduces non-compliance with Article 84 EPC.
G1/13 Opposition and Appeal status when being restored from administration
Where an opposition is filed by a company which subsequently, under the relevant national law
governing the company, for all purposes ceases to exist, but that company is subsequently restored to existence under a provision of that governing national law, by virtue of which the company is deemed to have continued in existence as if it had not ceased to exist, all these events taking place before a decision of the Opposition Division maintaining the opposed patent in amended form becomes final, the European Patent Office must recognize the retroactive effect of that provision of national law and allow the opposition proceedings to be continued by the restored company.
Where, as outlined above, a valid appeal is filed in due time in the name of the non-existent
opponent company against the decision maintaining the European patent in amended form, and the restoration of the company to existence, with retroactive effect as described above, takes place after the expiry of the time limit for filing the notice of appeal under Article 108 EPC, the Board of Appeal must treat the appeal as admissible.
