T 1795/10 – Over-Formalistic

This revocation appeal contains some interesting passages one of which concerns the admissibility of the opposition:

[1.1] Mr K. filed the opposition under the letter head of his firm and signed as patent attorney. The [patent proprietor] claimed that it was to be assumed that Mr K. was acting on behalf of an undisclosed client. The name of the opponent, however, was indispensable for a valid opposition.

The [patent proprietor] further stressed that Mr K. had failed to indicate his nationality and his place of residence, his place of business not being sufficient under R 76(2)(a) and R 41(2)(c).

[1.2] In decision G 3/97, the Enlarged Board of Appeal stated:

“An opposition is not inadmissible purely because the person named as opponent according to R 55(a) [EPC 1973 = Rule 76(2)(a) EPC 2000] 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. […]. 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;
• 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.”

Thus, the mere fact that the opposition was filed by a patent attorney, even if he might be representing a third party, does not necessarily mean that there has been a circumvention of the law by abuse of process which might render the opposition inadmissible.

[1.3] Following a failure to comply with R 76(2)(a) and R 41(2)(c), R 77(2) gives the opposition division (OD)  the authority to invite the opponent to remedy the deficiencies and – if the opponent fails to do so within a specified time period – to reject the opposition as inadmissible.

However, since the OD issued no such invitation there is no basis for holding the opposition inadmissible. R 77(1) (rejection without invitation to remedy the deficiencies) applies only to non-compliance with the provisions of A 99(1) or R 76(2)(c).

Therefore, even if there was a deficiency under R 76(2)(a) regarding the opponent’s identity (nationality and place of residence), this would not render the opposition inadmissible.

The opponent also objected that the amendments did not comply with R 80 (according to which the amendments have to be occasioned by a ground for opposition under A 100). The Board disagreed:

[3.2] In the board’s view, the amendments to claim 1 satisfy the requirements of R 80, because the amendment consisting of the insertion of the sentence “the lithium-metal composite oxide is synthesized from … in dehumidified air” was filed with the aim of overcoming the OD’s conclusions as to lack of novelty. Thus, this particular amendment was occasioned by a ground for opposition under A 100(a), as required by R 80.

That the [patent proprietor] also took the opportunity to delete the word “having” from the sentence “having a Karl Fischer moisture content of 0.2 wt % or less when heated to 180°C” cannot be seen as an infringement to R 80 because claim 1 already includes an amendment occasioned by a ground for opposition. Of course, when amending its claims, the proprietor should not use this as an opportunity to tidy them up, but it would be over-formalistic to reject a claim - with the consequence of the revocation of the patent - simply because a further minor and/or linguistic amendment was carried out.

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