T 356/08 – Desperate Measures

This decision deals with the appeal of the patent proprietor following the maintenance of the patent in amended form by the Opposition Division (OD). The opponent did not appeal. The proprietor filed several requests having a larger scope of protection than the request found allowable by the OD. The Board did not admit these requests under Article 12(4) RPBA because the requests could already have been (but had not been) filed before the OD. The Board also refused to remit the case to the OD. So the opponent thought his time had come.

** Translation from the German **

[3] The opponent has pointed out that the patent proprietor in its requests did not defend the patent in its version according to the auxiliary request 1 [that had been found allowable] in the interlocutory decision of the OD any more. This was tantamount to waiving the right to have the patent maintained in this version (in diesem Umfang). The prohibition of reformatio in peius was not applicable any more and the request for revocation of the patent was justified.

[3.1] [The patent proprietor] is the sole appellant against an interlocutory decision on the maintenance of the patent in amended form. Thus neither the Board of appeal nor the opponent who has not filed an appeal and who is a party as of right under A 107(2) EPC 1973 (sic), may challenge the version of the patent according to the interlocutory decision (G 9/92 [headnote 1]).

By filing an appeal, the [patent proprietor] aims at replacing the version of the patent which the OD has declared allowable by another version proposed by it, or, if this request is not allowed, at a dismissal of the appeal (G 9/92 [14]). Therefore the [patent proprietor] has not waived its right to have the patent maintained in the version of the auxiliary request 1 [found allowable] in the interlocutory decision of the OD.

Therefore, the [opponent’s] request for revocation of the patent is inadmissible.

This is coherent with what we have seen in T 426/07 (see the recent post dedicated to this decision) where the Board stated that “[f]rom a procedural point of view, a request [identical with the set of claims held allowable by the OD in its interlocutory decision] per se may be considered formally inadmissible, given that in respect of this request, the appellant is not adversely affected by the decision under appeal as required by A 107. However, this request is interpreted by the Board as in substance being a request for the dismissal of the appeal …”

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