Following the revocation of the patent under consideration by the Opposition Division (OD), the board of appeal in T 1468/08 set aside this decision and remitted the case to the OD “for further prosecution on the basis of the main request as filed during the oral proceedings before the Board” (which consisted of claim 1 only). The patent proprietor then requested correction under R 140 of the decision, “or other appropriate clarification”, to reflect that granted claims 2 to 10 “remain”.
The Board does not allow this request but indicates another way out of the dilemma.
[1] R 140, which is concerned with the correction of errors in decisions, states that: “In decisions of the EPO, only linguistic errors, errors of transcription and obvious mistakes may be corrected”. A decision contains an obvious mistake if the text thereof is not and obviously cannot be what the Board actually intended (see T 1093/05 [7]). R 140 does not pave the way to re-examination of the factual or legal issues on which a decision was based, nor to reversal of any conclusion derived by the deciding body from a consideration of these issues (see T 367/96 [2]).
[2] In the present case, it was clearly the intention of the Board in the above decision T 1468/08 to decide upon a single claim of a single request, reference being made hereto in the point IV of the Facts and Submissions of said decision, the Facts and Submissions being consistent with the Reasons for the Decision wherein only claim 1 is referred to […], and with point 4 which refers to remittal to the OD for further prosecution on the basis of “the claim according to the main request”. Thus, there being no obvious mistake in the decision, there is nothing to correct.
[2.1] In the minutes of the oral proceedings (OPs) held before the Board […], said minutes having been sent to the [patent proprietor] with a communication dated 28 December 2009, the final request of the [patent proprietor] as stated by the Chairman according to Article 15(6) RPBA before declaring the debate closed, was confirmed by the [patent proprietor] and recorded as being “that the decision under appeal be set aside and the patent be maintained on the basis of the main request as filed during the OPs before the board”. Said main request as filed during the OPs before the Board consisted of a single claim, namely claim 1 as indicated under the section entitled “Documents presented” on page 1 of the minutes. Thus the decision T 1468/08 is based on the request as filed at OPs before the Board, as reflected in the minutes thereof.
[2.2] The principle of party disposition as enshrined in A 113(2) allows the Board to decide only on a request submitted or agreed by the Proprietor of the patent. In the present case, the Board was thus only empowered to decide on the request as filed during the OPs before the Board, as this was the only pending request submitted by the [patent proprietor], as reflected in points IV and VII of the Facts and Submissions of the above decision T 1468/08 [IV] specifying that said request superseded all previous requests.
With regard to the [patent proprietor’s] statement in its letter […] that it was illogical and procedurally incorrect that the granted claims 2 to 10 should have been deleted, the question of deletion of claims does not arise. The principle of party disposition requires any party to identify in a positive manner those issues and objects it wants the deciding body to take a decision upon. In the present case, the [patent proprietor] identified the issues and objects as being claim 1 according to the main request as filed during OPs before the Board. Should the [patent proprietor] had wished to have a decision comprising also granted claims 2 to 10, then it fell within the exclusive competence of the [patent proprietor] to formulate such a request. It was thus logical and procedurally correct that the above decision T 1468/08 discussed only claim 1, said claim being the only claim submitted to the Board in the request as filed during the OPs before the Board, said claim being the only claim under review by the Board and the only claim decided upon in the above decision of the Board (see points [2.2] and [3.6] of the Reasons for the Decision).
[2.3] Therefore, the reference in point [IV] of the above decision T 1468/08 to “The only claim” correctly reflects the facts of this case. Having decided on the sole pending request as a whole, the Board thus sees no reason to correct its decision in this respect.
[3] With regard to the [patent proprietor’s] “belief” that the remittal should have referred to further prosecution also on the basis of the description, figures and claims 2 to 10 as granted, even if this “belief” were understood to be a request, this cannot be a request for correction under R 140, since the amendment desired would amount to a modification to the substance of the decision, such a modification not qualifying as a correction under R 140 […]. In any case, the Board notes that the description and figures never formed part of the [patent proprietor’s] request. As such, they could not be decided upon and therefore could not be reflected in the Order, as the [patent proprietor] apparently now wishes.
[4] With regard to the [patent proprietor’s] request for other appropriate clarification with regard to the status of granted claims 2 to 10, the Board may not explain its decision, which has to be taken at face value. The department of first instance, during further prosecution, is bound only by the ratio decidendi of the Board’s decision pursuant to A 111(2), the Board’s decision in this case being directed solely to claim 1 of the main request filed during OPs before the Board. Thus the Board notes that independent of the decision taken, during further prosecution of the case before the OD the [patent proprietor] may submit requests containing one or more of granted claims 2 to 10 as appropriate. Since limitation of claims during inter partes proceedings is regarded as a formulation attempt to respond to the objections raised rather than implying an irrevocable renunciation of subject-matter claimed, the [patent proprietor] thus still has every opportunity to submit such claims during the further prosecution of the case.
To read the whole decision, click here.
0 comments:
Post a Comment