Monday, 22 November 2010

T 1989/08 – Not Automatic

Will a third party intervention filed during opposition appeal proceedings and raising new objections automatically lead to a remittal to the first instance? Not necessarily, as the present case shows, where the Board found a way to avoid a remittal.

[2] The Board agrees with the [patent proprietor] that consideration of the new case based on new evidence and brought by the intervener at this late stage would normally require postponement or possibly remittal of the case. In order not to unreasonably prejudice the position of the opponent, the Board finds it however expedient to deny the request for immediate remittal and initially limit consideration of the case to the legal and factual framework defined by the original appeal as lodged by the [opponent] and subsequent submissions in response thereto, and without relying on any of the new evidence and facts presented by the intervening party or submitted responding thereto.

That claim 1 of all requests includes a feature (retrofitting) which, according to the [patent proprietor], addresses the intervening party’s case is also no impediment to the Board considering the case within the original framework of the appeal. Firstly, the [patent proprietor] cannot expect to have the Board consider amendments filed at such a late stage in the proceedings, i.e. one week before the oral proceedings (OPs), if he is not also prepared to discuss them unconditionally at this stage of the proceedings. Both the [opponent] and the intervening party were moreover prepared to discuss the new feature at the OPs within the framework of the original appeal, and indeed have done so. Both also argued against remittal: the desire for legal certainty of these parties, who represent the public interest, must outweigh any interest the [patent proprietor] may have for a first instance consideration of what can be decided within the initial framework.

The Board was therefore justified in denying the [patent proprietor’s] preliminary request for remittal. Given that it can decide the case within the framework of the original appeal, as is apparent from the reasons that follow, the question of remittal is in any case moot.

I think that the Board was right not to remit because otherwise the third party intervention, the aim of which was to have the patent revoked, would have had the effect of significantly delaying the revocation, which was possible on the basis of the grounds of opposition already discussed before the Opposition Division.

We shall see more of this decision next time.

Should you wish to download the whole decision, just click here.