Saturday, 28 August 2010

Interpretative spotlight: “maintain”

[1.1] The opponents have objected that the appeal was inadmissible under R 101 because it did not contain a statement defining the extent to which amendment or cancellation of the decision was requested, R 99(2). Furthermore since there was a contradiction between the request in the notice of appeal […] and the reasoning in the statement of grounds of appeal […] the appeal was not substantiated and the procedural situation was unclear. Therefore, according to the opponents, the appeal should be considered as inadmissible, because it did not meet the provisions of R 101(1).

[1.2] The board does not concur with this position of the opponents. Rather, as pointed out by the proprietor, in its notice of appeal […] the proprietor requested: “Reversal of the decision and maintaining the patent”.

Contrary to the perception of the opponents, the board does not interpret this request as “maintaining the patent as granted”. Instead the basis for the decision of the opposition division (OD) to revoke the patent was the set of claims filed with the letter of 18 October 2004 […] which was the only remaining request, because the proprietor had withdrawn the auxiliary requests during the oral proceedings […].

Accordingly reversal of the decision as requested would automatically lead to maintenance of the patent in the only version before the OD. Therefore the board finds that the notice of appeal complies with R 99(1).

[1.3] R 99(2) defines the requirements to be respected in the statement of grounds of appeal. These shall “indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based”.

The board has no doubt that the patent proprietor in its letter containing the statement of grounds of appeal […] has complied with these provisions. The board in particular notes that the statement of the grounds of appeal comprises detailed reasons why the claims of the only request before the OD and the board should be considered allowable.

The opponents’ argument that it is not clear from the statement which claims, from those as granted and those before the OD, are meant by the appellant patentee is not convincing: these claims differ only in that dependent claim 8 as granted has been deleted and in that the expression “astigmatism correcting properties” in the granted independent claims 1 and 17 explicitly refer to “eye astigmatism correcting properties” in the remaining independent claims 1 and 16 before the OD. As pointed out by the patentee, the statement of the grounds of appeal clearly address the contribution provided by the amended reference to “eye astigmatism” […], and also refer to independent method claim 16, which is absent from the set of claims as granted […].

[1.4] The opponents have made reference to decision T 501/92 for supporting their view that a request made by the patent proprietor at the first instance opposition proceedings was not applicable at the appeal proceedings and therefore not procedurally effective if this request had not been filed anew. The board, however, finds that the situation in the present appeal case has little in common with the situation in the cited decision: in case T 501/92 the OD had rejected the opposition, not revoked the patent, the appeal had been filed by the opponent, not the patentee, and the patentee had not formulated any request whatsoever in his response to the opponent’s statement of grounds of appeal.

[1.5] It is concluded that the appeal is formally admissible.

If you wish to download the whole decision (T 2030/07), please click here.