Wednesday, 28 April 2010

T 1042/06 – He Who Won The War May Still Claim Lost Battles

[2.1] The [patent proprietor] has argued in its written submissions, that objections under A 123, A 84 and A 54 could no longer be raised against the claims of the main request, since the opposition division (OD) had already acknowledged that these claims met the requirements of these articles and the opponent had not appealed against this decision.

Although this argument was no longer pursued at the oral proceedings before the board, it appears appropriate to point out at this juncture that the OD has revoked the patent in suit, and that the [opponent] was not adversely affected by this decision within the meaning of A 107, first sentence, because that decision was in conformity with the respondent’s request for revocation of the patent in its entirety.

Furthermore, as pointed out in G 9/92 [8 and 11, second §]:

“A non-appealing party as a respondent has the opportunity to make what it considers to be appropriate and necessary submissions in the appeal proceedings to defend the result obtained before the first instance.”

Thus, when a decision revoking a patent pursuant to A 101(2) has been taken, it is open to a respondent to re-argue matters which had already been on issue before the OD. If a respondent wishes to contend in the appeal proceedings that a particular issue in the decision under appeal was wrongly assessed, even though the overall result of said decision was in its favour, there is nothing in the EPC which could prevent the respondent from doing so (in this context see e.g. T 169/93 [2] and T 542/96 [2]).

Hence, the scope of the present appeal proceedings embraces the objections, in particular with regard to A 123 and A 54, raised by the [opponent] against the claims of the main request.

To read the whole decision, click here.