T 1188/09 – You May Come Back

The patent proprietor filed an appeal after the Opposition Division (OD) had revoked his patent. The main request before the Board was to maintain the patent as granted, although this had never been requested before the OD. 

Will the Board admit this request?

The opponents thought it should not, and pointed out that this question of law had been answered differently by the Boards, which justified the referral of the following question to the Enlarged Board of appeal (EBA):

Is a patent proprietor who has withdrawn the subject-matter of a main request before the OD (in the present case, the request to maintain the patent as granted), entitled to pursue this subject-matter in the appeal proceedings?

*** Translation of the German original ***

Referral to the EBA

[1] Opponent 3 has requested to refer the question of admissibility to the EBA by means of a referral pursuant to A 112(1)(a). For the reasons following from what is said in point [2] below the Board cannot grant this request.

Admissibility

[2.1] The [opponent’s] view that the appeal is inadmissible is based on the fact that the set of claims that the patent proprietor had defended during the opposition proceedings was limited with respect to the patent as granted. The OD had not decided on the set of claims as granted. Therefore, the patent proprietor was not entitled to defend the patent in a broader version, i.e. the claims as granted, after having submitted a limited version during the opposition proceedings.

[2.2] According to the established case law of the Boards of appeal the patent proprietor may not surrender his patent in part during opposition proceedings and irrevocably limit his patent by declaring that he does so (T 123/85 [3.1.1]). Based on this principle, the case law has deduced that the appealing patent proprietor whose patent had been defended in limited form only during the opposition proceedings cannot be hindered from requesting that the Board of appeal maintain the patent as granted. T 407/02 [1.2] has made the following statement:

Conversely, there is a predominant view that the patent proprietor who had defended his patent in limited form only during the opposition proceedings cannot, as a rule (i.e. unless the prohibition of reformatio in peius applies or there is an abuse of proceedings), be prohibited from reverting to a broader version of the patent, including the patent as granted, because limitations made in the meantime are not to be understood as a surrender of parts of the patent but only as formulation attempts that are to delimit the patent in view of objections (Benkard/Günzel, EPÜ, Munich 2002, A 107, marginal number 17). Therefore, the opponents have to expect in any case that the patent proprietor whose patent was revoked by the OD defends the patent as granted during the appeal proceedings.

Decision T 1018/02 [2.4], which was taken shortly afterwards, has expressly followed this approach. Decision T 386/04 [1] has reaffirmed the same view and pointed out that decisions that appeared to contradict it always dealt with situations where the amendment of the claims was tantamount to an abuse of proceedings. In this context the Board also commented T 528/93, which the present [opponents] have invoked and have said to be deviant. Decision T 420/03, which has also been cited by the [opponents], deals with the questions of whether criticism of a decision on apportionment of costs by the OD, which has not been attacked before, is still admissible after the expiration for filing the statement of grounds for appeal, which is an entirely different question.

[2.3] In the present case, the Board does not see any reason to deviate from this established case law. Nor does it see any divergence between the decisions of the Boards of appeal in this respect, which would call for a referral to the EBA.

Therefore, the appeal is admissible.

Certainly to be approved. The claims as granted are in the opposition proceedings at least at the time when the opposition is filed (unless there the patent was limited before the opposition was filed, that is). 

This being said, I wonder whether the more generous view of T 407/02 and T 1018/02, according to which the patent proprietor could also revert to a broader version somewhere between the patent as granted and the claims as defended during the opposition proceedings, is still up-to-date. The recent tendency to invoke Article 12(4) RPBA appears to go against this view.

To read the whole decision, click here. The file wrapper can be found here.