T 867/05 – Reinstatement Questioned

[11.1] The claims of the requests underlying the decision under appeal concerned artificial kidneys and a method of producing a polymeric membrane material.

[11.2] The claims of the requests annexed to the statement setting out the grounds of appeal of the proprietors appellants respectively concerned:

• an artificial kidney (Main, and Subsidiary Requests 1 to 7),
• a use, in in vitro dialysis, of the membrane material (Subsidiary Requests 8 to 10) and
• a method of producing an artificial kidney (Subsidiary Requests 11 and 12, as well as most of the previous requests as a further independent claim).

[11.3] In response to a communication of the Board in preparation for oral proceedings, the proprietors appellants, with their letter dated 11 September 2009, submitted 18 fresh requests concerning respectively:

• an artificial kidney (Main, 1st, 2nd and 15th Auxiliary Requests);
• a membrane material for use in an artificial kidney (3rd to 5th and 16th Auxiliary Requests);
• a membrane material as defined in the claims as granted (6th Auxiliary Request);
• a more limited membrane material as in Claim 7 as granted (7th, 8th and 17th Auxiliary Requests);
• a method of producing an artificial kidney (9th and 12th Auxiliary Request);
• a method of producing a polymeric membrane comprising the features of Claims 1, 7 and 13 as granted (10th, 11th and 14th Auxiliary Requests);
• a method of producing a membrane for use in an artificial kidney (13th Auxiliary Request).

[11.4] As regards the requests containing claims directed to a membrane material […], the opponents objected that the patent proprietors were not adversely affected by the decision under appeal, which did not deal with a membrane material, so that those requests were inadmissible.

[11.5] The question of whether or not a party is adversely affected by a decision taken by an authority as defined in A 106 arises in connection with A 107 in order to establish who may appeal. In the present case, the proprietors were adversely affected by the decision of the Opposition Division (OD), which did not accede to e.g. their Main Request, so that the appeal of the patent proprietors was admissible, which fact is not contested.

[11.6] The objection raised by the opponents indeed concerns the question of whether or not in opposition appeal proceedings broader claims (i.e. broader than those underlying the decision under appeal) may be reinstated (Case Law of the Boards of Appeal of the EPO, 5th edition 2006, VI.J.3.2.2(b)).

[11.7] According to the case law, where as in the present case the patent is maintained in amended form and the patent proprietors are themselves appellants, they may in appeal proceedings pursue claims which are broader than those held to be allowable by the OD.

[11.8] However, the opponents have referred to T 528/93, mentioned in the case law, in which it was decided that in appeal proceedings the patent proprietors may only pursue claims which were the subject of the decision at first instance, as they were not adversely affected with respect to claims requests that were not the subject of the decision under appeal, e.g. because the claims requests had been withdrawn before the OD. According to the opponents, that case was similar to the present one.

[11.9] The case law also mentions decision T 168/99 [1], in which it was decided that withdrawal of subject-matter (there, of the granted claims before the OD had commented on them) did not necessarily mean that it had formally been abandoned. Hence, the reinstatement of the claims as granted as the Main Request was allowed, in particular because objections under A 123, paragraphs 2 and 3, had been raised against the requests containing amended claims.

[11.10] It is apparent from the above that T 528/93 deals with claims being substantially identical, withdrawn before the OD and represented before the Board, whereas T 168/99 concerns a case in which there was no explicit abandonment of the claims as granted and issues under A 123(2)(3) were raised against the claims of the auxiliary requests.

[11.11] Since in the present case the claims as granted had not been explicitly abandoned, Claim 1 of the 4th Auxiliary Request had never been presented before the OD and issues under A 123(2)(3) were raised against the claims of the Main and 1st to 3rd Auxiliary Requests, the present case is similar to T 168/99 rather than to T 528/93.

[11.12] Hence, there is no conflict with T 168/99 and the conflict between T 528/93 and T 168/99, if any, does not affect the present case.

[11.13] In view of the case law and in the absence of any conflicting decision to the present case, a referral to the Enlarged Board of Appeal as invoked by the opponents is not necessary.

[11.14] Therefore, the […] request is admissible.

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