T 1895/06 – It Ain’t Over ’Til It’s Over

In this case the patent was revoked by the Opposition Division (OD); the claims as granted were said to lack inventive step. There was a first appeal (T 1284/01); the Board decided that the opposition was admissible and remitted the case to the OD without dealing with the substantive issues, because it came to the conclusion that the patentee’s right to be heard had been violated. The patentee did not maintain the request to maintain the patent as granted. The OD revoked the patent again. In its second appeal, the patentee reverted to the claims as granted. The opponent questioned its right to do so.

[…] The [opponent] questioned the admissibility of reverting to the claims of the patent as granted since during the second round of opposition proceedings, maintenance of the patent was no longer requested on this basis. The [opponent] was of the view that since the contested decision did not address claim 1 as granted, it was not permitted to return to this version. Decision T 528/93 was cited to support this view. [3.1]

As pointed out by the [proprietor], claim 1 as granted was already the subject matter of the first decision of the OD, dated 19 October 2001, where the subject matter of claim 1 as granted was found to lack an inventive step. It was therefore clear to the [proprietor] during the second round of opposition proceedings that to revert to the version of claim 1 as granted would only have led to the same result as the first decision. This assumption was confirmed by the fact that, in the second decision of the OD, dated 17 November 2006, claim 1 of the main request had been restricted with respect to the version as granted, but was nevertheless found to lack novelty. [3.2]

The proprietor now wishes to have the negative findings on novelty and inventive step of both decisions of the OD reviewed in this current second round of appeal proceedings. For this reason, the proprietor has reverted to the claims as granted as a main request. [3.3]

The decision T 1284/01 resulting from the appeal proceedings following the first round of opposition proceedings did not deal with the contested decision of the opposition OD in substance. Since the Board of Appeal has not yet issued a decision on the substantive issues leading to the revocation of the patent as granted, the proprietor is entitled to a review of this - his currently main - request. For this reason the [proprietor’s] main request, i.e. maintenance of the patent on the basis of the set of claims as granted, is admitted into the proceedings. [3.4]

In case T 528/93, which the respondent (opponent) cited to support his argument, the proprietor had attempted, during appeal proceedings, to introduce a set of claims which had never been decided upon by the OD. The Board in that case decided that a request based on such claims was inadmissible since no decision had been issued on such claims and the appellant could consequently not be considered to be adversely affected by the decision in respect of such claims.

The situation in the present case is distinguished from the situation of T 528/93 in that the OD has issued a decision upon the subject-matter of the claims of the granted patent, the substance of this decision having not yet been decided upon by the Board of Appeal. Thus, the line taken in T 528/93 cannot be applied to the present case. [3.5] 

Finally, the patent was maintained as granted after having been revoked twice!

To read the whole decision, click here.