In the present case the Opposition Division (OD) had maintained the opposed patent in amended form. Both parties filed an appeal. The Board rejected the main request (claims as granted) for lack of inventive step and did not admit late filed auxiliary request 1. The following discussion concerns the second auxiliary request, which corresponds to the claims as maintained by the OD.
** Translation from the French **
[4.1] The patent proprietor, who in its written submissions had been silent on its position with respect to the decision of the OD to maintain the patent in amended form – which is contested by the appeal filed by the opponent – has declared during the oral proceedings (OPs) that it did not abandon this version of the patent, which has become its auxiliary request 2. Moreover, the Board has seen in its statement of grounds of appeal (page 11) that [the patent proprietor] fully agreed with the opinion of the OD […].
The patent proprietor acknowledged that it had not responded to the objection under A 123(2)(3) but pointed out that this was because the objection was manifestly unfounded, as he would show during the OPs. [The proprietor] requested that the appeal filed by the opponent be dismissed.
[4.2] The opponent has objected to [the request] which during the proceedings has become the second auxiliary request, because of its belated filing.
The explanations provided by the opponent during the OPs show that the opponent is of the opinion that the dismissal of the patent proprietor’s appeal entails the setting aside of the first instance decision and that the patent proprietor’s silence [with respect to this decision] in its written submissions until the OPs is to be understood as the expression of its disagreement with the text of the patent as maintained by the OD. According to the opponent, the request to dismiss the appeal filed by the opponent and, therefore, to maintain the patent in its version accepted by the OD, which request was first made during the OPs, is a new request.
[4.3] This being said, it has to be noted that both the patent proprietor and the opponent have filed requests and each has attacked the part of the decision by which it was adversely affected, in conformity with A 107.
The Board’s dismissal of the main request on which the patent proprietor’s appeal is based and the refusal to admit its subsidiary request 1 result from the examination of the decision of the OD dismissing the patent proprietor’s main request. This dismissal has not required the assessment of the decision to maintain the patent in its amended form (auxiliary request 2).
Consequently, the dismissal of the patent proprietor’s appeal does not ipso facto entail the setting aside of the decision of the OD. Quite to the contrary, this decision is confirmed: the part of the decision that is attacked by the patent proprietor is confirmed by the dismissal of its appeal. The part of the decision granting the patent proprietor’s request cannot be questioned by the latter, as [the patent proprietor] is not entitled to act [against this part of the decision] under A 107.
[4.4] It is true that the patent proprietor, as a respondent to the appeal filed by the opponent, has not explicitly requested in its written submissions that this appeal be dismissed. It contented itself with requesting that the decision refusing its main request (corresponding to its present main request […]) be set aside.
However, on one hand, this silence has no impact on the decision of the first instance, which survives the dismissal of the patent proprietor’s appeal and remains valid as long as it has not been set aside.
On the other hand, the interpretation of this silence as being the expression of the patent proprietor’s disagreement with the text of the request that had been maintained (A 113(2)) is tantamount to the presumption that the patent proprietor has abandoned its right to a patent.
Such an interpretation goes against the established case law according to which the abandonment of a right cannot be presumed. If it is implicit, it has to be clearly confirmed by the proprietor’s behaviour (for an illustration of this principle applying to various kinds of rights, see J 11/87 [3.6], J 7/87 [6], J 11/94, T 942/01 [1.3] and T 344/02 [2]).
In the present case, the patent proprietor has never given the impression that it abandoned this request. Neither has it given the impression that its main request which it defended within the framework of its appeal was to replace the auxiliary request 2 which the OD had allowed, which very decision has been appealed by the opponent.
[The patent proprietor’s] appeal has [tried to] uphold a broader version of the patent. The intuitive (spontanée) interpretation of this behaviour is that to its mind, the request to dismiss the other side’s appeal necessarily followed from its own appeal aiming at a broader patent.
Conversely, deducing from its silence that it abandoned the benefits of the decision of the first instance with respect to the maintenance of the patent in amended form is a mere speculation that is not coherent with the circumstances of the case.
It follows from what has been said that the patent proprietor as respondent has to be granted the right to defend the appealed decision.
The lack of arguments in its written submissions can only have an impact on the extent of the means he may assert in application of Article 12 RPBA.
Alas, the auxiliary request was found not to comply with A 123(2) and the patent was revoked.
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