Friday, 28 May 2010

T 281/07 – Revival Is Possible

When a request has been withdrawn in opposition proceedings, can it be resurrected in appeal proceedings ? In T 390/07 the Board had found such a request inadmissible. The purpose of an appeal being to review what has been decided at first instance (and, by necessary corollary, not to review what has not been decided), the only basis on which a request withdrawn at first instance might be admitted on appeal - so the Board - was that, as in the case of any other request filed on appeal, it might overcome the reasons for the decision actually given on another request.

The present Board is more relaxed. It allows the resurrection of a formerly withdrawn request and explains why the reasoning of T 390/07 should not apply.

[2.1] Claim 1 of the […] main request is identical with claim 1 of auxiliary request 3 that had been filed during oral proceedings before the Opposition Division […] and then withdrawn, so that it is not part of the impugned decision. […] However, the claims as granted (main request during the opposition proceedings), which had been found not to be patentable under A 123(2) because of an unallowable disclaimer, are part of the impugned decision. […] These claims have been maintained as main request upon filing of the appeal and have been replaced by the present main request by a letter dated October 13, 2009.

Therefore, the present case differs from the situation underlying decision T 390/07 where the auxiliary request that had been withdrawn during the opposition proceedings was again filed as main request from the very beginning of the appeal proceedings (see T 390/07 [X]). Moreover, also in contrast to T 390/07, the main request in the appeal proceedings has been filed with the intention to overcome the ground of opposition mentioned in the impugned decision and to improve the position with regard to novelty and inventive step by limiting the claimed subject-matter to particularly preferred embodiments. This is a legitimate way of proceeding that corresponds to the aim of the appeal proceedings. Therefore, the Board has exercised the discretion conferred to it by Article 13(1) RPBA and admitted the amended main request.

To read the whole decision (in German), click here.