T 1763/06 – Abuse, Abandon and Adverse Affection

This decision does not open new grounds but it is a useful reminder of things easily forgotten.

A 107 provides that only parties that are adversely affected by a decision may appeal the decision. In the present decision the opponent pointed out that the appeal of the patentee was inadmissible because he was not adversely affected: according to the opponent, during the first-instance proceedings the patent proprietor made no request for maintenance of the patent as granted or as amended according to the main or the auxiliary request No. 1 submitted with its statement of grounds of appeal; consequently, as far as the mentioned main and auxiliary request No. 1 were concerned, the patent proprietor was not adversely affected by the decision under appeal within the meaning of A 107.

[…] As regards the appeal of the patent proprietor, the opponent submitted that the subject-matter of the claims amended according to the main and auxiliary request No. 1 filed by the patent proprietor with its statement setting out the grounds of appeal was broader than that of the claims of the requests defended by the patent proprietor during the first-instance proceedings, and that consequently, as far as the mentioned main and auxiliary request No. 1 were concerned, the appeal was not admissible because the patent proprietor was not adversely affected by the decision under appeal within the meaning of A 107.

However, the opponent did not contest the admissibility of the appeal of the patent proprietor with respect to the claims amended according to the remaining auxiliary requests No. 2 to 13 also filed with the statement of grounds of appeal, and during the oral proceedings the opponent did not dispute this finding of the Board. In addition, no other issue appears to call into question the admissibility of the appeal of the patent proprietor. Accordingly, irrespective of the admissibility into the proceedings of the main and auxiliary request No. 1 filed with the grounds of appeal, the admissibility requirements concerning the appeal filed by the patent proprietor were met at the time of filing the statement of grounds of appeal at least as far as the auxiliary requests No. 2 to 13 were concerned. As a consequence, the appeal of the patent proprietor is admissible.

It is noted in this respect that an appeal can only be assessed as a whole (T 382/96 [1]) and that there is no support in the EPC for a notion of “partial admissibility” of an appeal (T 774/97 [1.1]); thus, if the admissibility requirements, and in particular those of A 107, are fulfilled at least in respect of one request, let alone of several request as is the case of auxiliary requests No. 2 to 13, the appeal as a whole is admissible. [1.2]

[…] During the first-instance proceedings the patent proprietor repeatedly amended the claims as granted in an attempt to overcome the different grounds for opposition and also the different objections raised by the opponent and the opposition division with regard to specific technical features of the claims, and the interlocutory decision under appeal was then based on a main and three auxiliary requests containing different amended versions of the independent claims as granted. In addition, as noted in decision T 168/99 [1] cited by the patent proprietor, withdrawal of subject-matter does not necessarily mean that it has formally been abandoned. The basis for determining the presence of an adverse effect within the meaning of A 107 are therefore the claims as granted.

In the circumstances of the present case, the Board does not see any reason for not allowing during the present appeal proceedings a claim request containing independent claims consisting of the independent claims as granted amended as to clarify the meaning of a claimed technical feature; in particular, the fact that the subject-matter of these amended independent claims is broader than that of the claims of the amended requests considered during the first-instance proceedings does not constitute, in the absence of any special circumstance such as a possible abuse of procedure, a sufficient reason for not admitting the present main and sole request into the appeal proceedings. The patent proprietor is adversely affected because it has not abandoned any subject-matter of the claims as granted. [2]

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