XVI.3. Maintenance of the patent in amended form

XVI.3. Maintenance of the patent in amended form XVI.3.1. Art.101(3)(a) and R.82 contain the legal provisions for the maintenance of a patent in amended form. The current EPO practice for implementing these provisions, which involves the issue of a so called interlocutory decision, is not explicitly contained in the EPC, and is laid down in OJ 1989, 393, in the Guidelines D-VI, 7.2.1 and derives from established case law (G1/88). Note that G1/88 and OJ 1989, 393 were published under the EPC 1973 and refer to old Art.102(3), [now Art.101(3)(a)] and to R.58(4) [now R.82(2)]. However, it is clear from the EPC Guidelines that this practice remains unchanged. The legal basis in the EPC Art.101(3)(a) If the Opposition Division is of the opinion that: - taking into consideration the amendments made by the proprietor during the opposition proceedings, - the patent and the invention to which it relates, meets the requirements of the EPC, then it shall decide to maintain the patent as amended, provided that the conditions laid down in the regulations are fulfilled. Information and invitation to comment R.82(1) Before the Opposition Division decides to maintain the patent as amended: - it informs the parties of the text in which it intends to maintain the patent, and - invites them to file their observations within two months if they disapprove of the text. According to the current EPO practice, the issue of a communication under R.82(1) [former R.58(4)] is not required when the proprietor already approved the amended text and the opponent had sufficient opportunity to comment on it (G1/88, see XVI.3.2). Continuation of opposition R.82(2) If a party disapproves of the text communicated by the Opposition Division, examination of the opposition may be continued. The opponent could always disapprove of the text in which the Opposition Division intends to maintain the patent, but the Opposition Division is not obliged to continue the opposition - examination of the opposition may be continued and in any case, this communication is not always required [see above]. The overriding principle is that the opponent has had sufficient opportunity to comment on the legal and factual framework behind the decision to maintain the patent in amended form [Art.113(1)]. Invitation to fulfil formal requirements R.82(2) Otherwise, [i.e. if the opposition is not continued] the Opposition Division shall, on expiry of the R.82(1) period, invite the proprietor of the patent to: - pay the prescribed fees, and - file a translation of any amended claims into the official EPO languages other than the procedural language: R.82(2) This must be done within a period of three months of notification of the R.82(2) communication. Note that according to current EPO practice, the invitation to pay fees and to file translations is only sent once the interlocutory decision has became final, see XVI.3.2. Rfees 2(1).8 This regulation provides for the above fee under R.82(2). Second chance to comply / sanction R.82(3) If the acts required by R.82(2) are not performed in due time the proprietor can perform them within two months of a communication pointing out this failure. R.82(3) A surcharge must be paid within this period. Rfees 2(1).9 This regulation provides for the surcharge under R.82(3). R.82(3) If the proprietor fails to do so within the above two month period, the patent is revoked. Decision mentions text R.82(4) The decision to maintain the EP patent as amended shall state which text of the patent forms the basis for the decision. XVI.3.2. EPO practice: the interlocutory decision The interlocutory decision: what is it and why is it issued? G1/88 Even if no provision is expressly laid down in the EPC, when a patent is maintained in amended form, it is an established EPO procedure to deliver an "interlocutory decision" first to establish the text of the amended patent. - Only after the interlocutory decision has become final, will the printing fee and translations of the claims be requested. With the interlocutory decision the Opposition Division decides on the text of the amended patent. The decision terminates the substantive examination of the opposition, but does not close the opposition Andrea Veronese & Peter Watchorn 2013 386

proceedings, because the formal requirements of paying fees and filing translations have not yet been complied with. According to Art.106(2) the parties may appeal against the interlocutory decision if they do not agree with the amended text. The interlocutory decision comes into force when the period for filing an appeal has expired without an appeal having been filed or, if an appeal has been filed, when the final decision is issued by the Board of Appeal. The advantage of issuing an interlocutory decision is that the proprietor is not obliged to pay fees and to file translations until the decision has became final. Not doing this would oblige him to comply with the formal requirements twice, in those cases where the decision is appealed and the text is further amended in appeal proceedings. When to issue interlocutory decision? OJ 1989, 393 & D-VI, 7.2.1 The "interlocutory" decision to maintain the patent in amended form may only be issued on a text which is: - submitted or agreed to by the patent proprietor [Art.113(2)] and, - on which the opponent has had sufficient opportunity to comment [Art.113(1)], either in writing or in oral proceedings - complete, including, where appropriate, an amended description and amended figures. If the Opposition Division considers that the patent can be maintained in amended form, it immediately endeavours: - to obtain the proprietor's consent to the amended text, and - to give to the opponent the right to be heard, i.e. to have the opportunity to comment on the amended text. Once these prerequisites are fulfilled, in the written or oral procedure, the interlocutory decision can immediately be issued. In this case it is not necessary to send a R.82(1) communication. In case of oral proceedings the interlocutory decision can be given at the end of the oral proceedings. D-VI, 7.2.1 The pre-requisites can be fulfilled in oral proceedings. If the opponent is present at oral proceedings he is informed of the amended text and he is given the opportunity to comment on it. Art.101(1) communication required? D-VI, 7.2.1 If the prerequisites have not been met and oral proceedings will not be held, an Art.101(1) communication must be issued. These are communications in which the parties are invited to file their own observations on the observations of the other parties or of the Opposition Division. Such a communication is also sent if the Opposition Division would maintain the patent in a certain form but a corresponding approved text is not yet available. T457/89 By analogy to G1/88, if a party to the opposition (here it was the patentee) does not reply to the Art.101(2) [now Art.101(1)] communication he can still appeal against the decision. Proprietor s approval of the text D-VI, 7.2.1 A separate declaration of approval of the text by the proprietor is not required, and can be apparent from the circumstances, e.g. from the fact that he filed an amended text, which can be in the form of an auxiliary request. This means that, in the absence of other circumstances indicating the contrary, if the patentee files amendments to the patent the amended text can be considered by the Opposition Division to have been approved by the proprietor. Amendments by Opposition Division T1081/02 In this case the Opposition Division requested the proprietor to file documents considered necessary to maintain the patent, but then did not wait for the period set to expire and issued its decision based on an existing request referring to amendments of that request which it deemed necessary for maintenance of the patent. - The substantive amendment by the Opposition Division of a text submitted by the proprietor and a decision based thereon without allowing the proprietor to comment on the amendments made by the Opposition Division constituted a violation of the proprietor s right to be heard under Art.113(1). This was also a violation of Art.113(2) whereby the Opposition Division should only have decided based on the text submitted or approved by the proprietor. R.82(1) communication required? G1/88, OJ 1989, 393 & D-VI, 7.2.1 If in the written or oral proceedings: - the proprietor has approved the text in which the Opposition Division intends to maintain the patent, - the text is complete, including, where appropriate, amended description and figures, and - the opponent had sufficient opportunity to comment on that text, then the issue of a communication under R.82(1) [former R.58(4)] is neither necessary nor appropriate. Despite the stern wording of R.82(1), which states that: before the Opposition Division decides to maintain the EP patent as 387 Andrea Veronese & Peter Watchorn 2013

amended, it informs the parties of the text, and it invites to file observations, G1/88 clearly indicated that R.58(4) [now R.82(1)] does not need to be applied subject to the conditions indicated above. This is now established EPO practice. T1079/96 In this case the opponent had had the chance to comment on the amended claims on the basis of which the Opposition Division issued a decision maintaining the patent in amended form. The Opposition Division then issued the decision with an unamended description [not adapted to the limited claims]. The Opposition Division should have sent a R.58(4) [now R.82(1)] communication because it had not told the opponent about the text of the description in which it intended to maintain the patent. T446/92 The opponents failure to attend oral proceedings was taken as tacit abandonment of his right to comment on the amendments filed by the proprietor in those oral proceedings [which however, only responded to issues which were already part of the proceedings]. - Furthermore, a communication under R.58(4) [now R.82(1)] was not deemed necessary. However, this decision appears to be at odds with G1/88, which provides that an abandonment of rights cannot be presumed by the EPO - "a jure nemo recedere praesumitur". R.82(1) communication useful D-VI, 7.2.1 According to the Guidelines, a communication under R.82(1) can be useful when a text already approved by the patentee and on which the opponent had the opportunity to comment requires editorial changes. - The communication then points out to the parties the amendments and indicates a period for reply. This Guideline appears to mean that the Opposition Division indicates in the communication those minor amendments [to an existing request from the proprietor], which it considers necessary to arrive at a text suitable.for an interlocutory decision to maintain the patent in amended form. - If the patentee does not object to the amendments, he is considered to have approved the text. Otherwise the proceedings continue, and may end up with revocation if an alternative appropriate text is not filed. - If the opponent disagrees, the Opposition Division may continue the opposition if it believes that the patent does not meet the EPC requirements. Disapproval of the opponent does not guarantee continuation of the proceedings, since the changes should only be of an editorial nature with regard to the previous version submitted by the proprietor and so the opponent's rights under Art.113(1) would have already been respected with regard to the substantive issues of the amended text (whether it is patentable, added subject matter, extension of protection etc). If substantive issues are still to be resolved, the Opposition Division must issue a communication under Art.101(1) or summon the parties to oral proceedings, and may not issue a R.82(1) communication indicating amendments. Opponent s failure to reply to R.82(1) communication / Right to appeal G1/88 If the opponent fails to reply to the R.58(4) [now R.82(1)] communication in due time, this does not render his appeal inadmissible. The opponent s failure to object to the text in which the Opposition Division intends to maintain the patent is not interpreted as his approval of the text, nor as a waiver to his right to file an appeal against the interlocutory decision. T457/89 By analogy to G1/88, if a party to the opposition [here it was the patentee] does not reply to a Art.101(2) [now Art.101(1)] communication, he can still appeal. Auxiliary requests T234/86 & H-III, 3 E-IX, 5.3 In opposition proceedings, the patentee may file, together with a main request, one or more alternative sets of claims as auxiliary requests. Normally the most broadly formulated request is the main request and the more limited version/s is/are auxiliary request/s [see also T745/03]. When a main and auxiliary request are filed, if the Opposition Division finds that the patent can be maintained in amended form on the basis of one of the requests, it issues an interlocutory decision to the effect that the patent as amended meets the EPC requirements. - The decision must also indicate why any higher-ranking request does not meet the EPC requirements. H-III, 3.1 Any request ranked below the allowable one is not examined. The opponent may usually appeal against this decision, since he is usually adversely affected by the maintenance of the patent [Art.107]. T234/86- If the Opposition Division decides to maintain the patent on the basis of an auxiliary request, this does not mean that the proprietor has given an unconditional approval to this text. The proprietor is Andrea Veronese & Peter Watchorn 2013 388

negatively affected by the decision because the higher ranking requests have been rejected; he may therefore appeal the decision. For more information on auxiliary request in opposition proceedings see also XV.4.4.5. T484/88 If the Opposition Division maintains a patent on the basis of an auxiliary request without giving the reasons for refusing the higherranking requests, this constitutes a substantial T155/88 A patentee cannot be required to withdraw any request. If he files one or more auxiliary requests in addition to a main request and does not withdraw any of them, an Opposition Division is obliged in its decision to give reasons why each successive request is either: - not admissible, or - not allowable on substantive grounds. If an Opposition Division allows an auxiliary request without giving reasons in its decision as to why the higher ranking requests were not allowable, this constitutes a substantial T506/91, T528/93, T613/97, T54/00 & T434/00 However, if the patentee withdraws all higher requests above that found to be acceptable, then the Opposition Division does not need to give reasons why these do not comply with the EPC in the decision. T234/86 The proprietor has the right to file main and auxiliary requests in opposition proceedings. - If the Opposition Division decides to maintain the patent on the basis of an auxiliary request [and reject all higher ranking requests], this does not mean that the proprietor has given an unconditional approval to the text of this allowable auxiliary request. The proprietor is negatively affected by the decision because the higher ranking requests have been rejected; he may therefore appeal the decision. Reasons for the decision R.111(2) The decision of the EPO [here the interlocutory decision], shall be reasoned and accompanied by a communication pointing out the possibility of appeal. In the case of an interlocutory decision a reasoning must be provided for not acceding to any of the requests from the parties. For example, the decision may have to indicate the reasons for not maintaining the patent as granted, and in the meantime the reasons for rejecting a request to have the patent revoked in its entirety. The decision will additionally have to give reasons for refusing any other request, for example for not admitting late filed new grounds, facts or evidence in the proceedings. The only exception is where a request has been withdrawn during the opposition proceedings. Right to be heard Art.113(1) The decision [here the interlocutory decision] can be taken only if it is based on grounds and evidence on which the parties concerned have had the opportunity to comment. All parties to the proceedings must have had the right to be heard: these are the proprietor, any opponent, and any intervener party to the proceedings. Third parties making observations under Art.115 are not parties to the proceedings. The comments made in the sections relating to revocation of the patent ( XVI.1.1) and rejection of the opposition ( XVI.2.1) also apply here. Interlocutory decisions in appeal T1063/92 The Board of Appeal simply decides on the substantive issues of the case and remits it back to the department of first instance (the Opposition Division). There is no reason for the Board to issue an interlocutory decision. Consequently, the issue of translations and printing fees does not arise in appeal and so an interlocutory decision is not necessary. Decision on wrong text T666/90 Uncertainty and disagreement arose after oral proceedings and before the written decision about which were the latest requests and in which order requests were to be ranked [H- III, 3.1.1]. Failure to clarify the position was a breach of Art.113(2) and a substantial T552/97 The Opposition Division incorrectly believed that the main request had been withdrawn and did not include it in its decision. This was a violation of Art.113(2) and a substantial T425/97 The decision in oral proceedings maintained the patent in amended form according to an auxiliary request. However, the claim attached to the written decision was different from that which had been found allowable in the oral proceedings. The decision to maintain in amended form was taken on the basis of the wrong text. This was a violation of Art.113(2) and a substantial procedural violation. T543/92 & T89/84 In these cases the Opposition Division revoked the patent without taking into account amended texts submitted by the proprietor. In T543/92, the patentee replied to a communication under Art.101(2) [now Art.101(1)] on time, filing amended texts. However, the Opposition Division did not see these texts because of an administrative error and revoked the patent as granted. This was a 389 Andrea Veronese & Peter Watchorn 2013

violation of Art.113(2) and a substantial In T89/94 the patentee filed amendments very shortly before the issuance of the decision. The amended documents were, however, filed before handing over of the decision to the internal EPO postal service and so were in time to be considered [G12/91]. However, the Opposition Division appears not to have received the amendments before issuing its decision because the amendments were received so close to the date on which the decision was posted. This was a violation of Art.113(2) and a substantial XVI.3.3. Appeal against the interlocutory decision D-VI, 7.2.2 The interlocutory decision is open to a separate appeal under Art.106(2). Art.108 The notice of appeal must be filed within 2 months from the written notification of the decision. The appeal fee must be paid within the same period. Within four months of the [written] notification, a statement setting out the grounds for appeal has to be filed according to the regulations. Adversely affected Art.107 The party adversely affected by the decision may appeal against it. - Any other parties to the proceedings are parties to the appeal proceedings as of right. The opponent is adversely affected by the interlocutory decision to maintain the patent in amended form, if he: - requested the revocation of the patent in its entirety, or - requested that the patent not be maintained with particular subject matter still present in the claims, where this matter is still present in the amended version in which the Opposition Division has decided to maintain the patent, or - requested that the patent be maintained according to an auxiliary request lower than that, according to which the Opposition Division decided to maintain the patent. The patentee is adversely affected where he filed a main and one or more auxiliary requests and his main request was not granted by the Opposition Division - T234/86 [this is usually to maintain the patent as granted]. The right to appeal may however be lost by a party who has withdrawn the request/s preceding the request allowed in the decision [see below]. No reply from a party / right to appeal G1/88 If the opponent fails to reply to the R.58(4) [now R.82(1)] communication in due time, this does not render his appeal inadmissible. This is the communication where the Opposition Division invites the parties to comment on the amended text in which it intends to maintain the patent. The opponent s failure to file any objections to this text is not interpreted as his unconditional approval of the text, nor as a waiver to his right to file an appeal against the interlocutory decision. T457/89 By analogy to G1/88, if a party to the opposition [here it was the patentee] does not reply to a Art.101(2) [now Art.101(1)] communication, he can still appeal. Interlocutory decisions in appeal T1063/92 The Board of Appeal simply decides on the substantive issues of the case and remits it back to the department of first instance (the Opposition Division). There is no reason for the Board to issue an interlocutory decision. Since the Board does not send a R.82(2) communication, this is done by the Opposition Division after the appeal. Consequently, the issue of translations and printing fees does not arise in appeal and so an interlocutory decision is not necessary. Auxiliary requests T234/86 If the patent is maintained in amended form, based on an auxiliary request, then the patentee can appeal this decision [to refuse the higher ranking requests]. T506/91, T528/93, T613/97, T54/00 & T434/00 However, if the patentee withdraws all higher requests above that auxiliary request found to be acceptable by the Opposition Division, then the patentee is not adversely affected and so cannot appeal [any such appeal would be inadmissible]. No interlocutory revision If an interlocutory decision is taken, since the appellant [opponent or patentee or both] is always opposed by other party, no interlocutory revision by the Opposition Division under Art.109(1) is possible. The only exception to this is where all opponents party to the proceedings withdraw their oppositions, but the Opposition Division continues of its own motion under R.84(2) [see XV.7.2]. With the exclusion of this particular case, the appeal is always forwarded directly to the Board of Appeal. Transfer of the opposition G2/04 If when the appeal is filed (here an opposition appeal), due to a request for a transfer of the opposition there is uncertainty as to who is the correct party to the proceedings, it is legitimate to: Andrea Veronese & Peter Watchorn 2013 390

XVI.3.4. - file the appeal in the name of the person who appears to be the correct one, and - indicate as auxiliary request, that the appeal is the name of another person which could alternatively be seen as the correct one. This was actually done by the opponentappellant of G2/04. In fact the opponent requested as an auxiliary measure that the opposition was treated as being in the name of another company X, which could alterantively be seen as the correct appellant. The interlocutory decision becomes final specification of the patent as soon as possible after the mention of the opposition decision has been published in the EP Bulletin. Content/form of new specification R.87 The new specification of the EP patent shall include the description, claims & drawings as amended. R.73(2), R.73(3) and R.74 apply. R.73(2), R.73(3) and R.74 concern the requirements of form and content of the EP patent specification as granted after examination proceedings. R.82(2), D-VI, 7.2.3 & OJ 1989, 393 Once the interlocutory decision becomes final, which means that: - the period for appeal has expired without any appeal been filed, or - after appeal proceedings are terminated, possibly with a new amended text having been established, then, the proprietor is requested to do the following within three months: - pay the printing fees for a new EP specification, and - file a translation of any amended claims in the two EPO official languages other than the procedural language, Rfees 2(1).8 Prescribed amount of the printing fee. Failure to pay fees/provide translations R.82(3) If the acts requested under R.82(2) are not performed in due time, then: - they may be validly performed within two months of a communication indicating the failure to observe the time limit - provided that a surcharge is provided within this same period. Rfees 2(1).9 Prescribed amount of the surcharge. R.82(3) If these acts are not performed during this additional two month period, the patent is revoked. Re-establishment can be applied for here according to Art.122. However, further processing (Art.121) does not apply because it is only applicable to applicants. G1/90 Revocation under Art. 102(4) or Art.102(5) [now R.82(2)], is a decision and can give rise to appeal (overrules T26/88). Decision mentions text R.82(4) The decision to maintain the EP patent as amended shall state the text of the patent which forms the basis of the decision. XVI.3.5. Publication of new patent specification Art.103 391 If the EP patent is maintained as amended cf Art.101(3)(a), the EPO shall publish a new Andrea Veronese & Peter Watchorn 2013