Friday, 15 January 2010

T 553/08 – The Holistic Look

The patentee filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form. At the oral proceedings (OPs), it submitted a new main request comprising claims 1 to 6 (“Use of a fusion protein …”), Claims 7 to 11 (“An isolated polynucleotide molecule …”), Claims 12 to 16 (“An isolated polypeptide …”), Claims 17 to 31 (“Use of a compound …”) and Claim 32 (“Use of an antibody …”). Claims 1 to 6 were identical to the claims allowed by the OD.

Claims 1 to 6 of [the main] request [filed during OPs] correspond to the claims of the request accepted by the OD with the omission of the medical condition “renal neoplasms” in claim 1. In accordance with the principle of prohibition of reformatio in peius, a claim request which would consist exclusively of claims 1 to 6 accepted by the OD could not be challenged on appeal as the opponents did not file any appeal. In contrast, the present situation is that claims 1 to 6 (with the deletion of an embodiment in claim 1) are part of a new request comprising 32 claims. Like all new requests, this request is to be considered as a whole, which means that in the framework of the appeal, claims 1 to 6 would also be open to question. [1] 

In other words: the non reformatio in peius doctrine cannot be applied to parts of a request. Either it protects a request as a whole against attacks, or it is of no use whatsoever.

To read the whole decision, click here.


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