Saturday, 9 June 2012

T 1848/09 – Can’t Complain

The fact that the Opposition Division (OD) has maintained the patent under consideration in amended form does not automatically give the patent proprietor the right to appeal. It really depends on what the last main request before the OD was, as the present decisions reminds us.

[1.1] Both parties have appealed. However, the appeal of the patent-proprietor is inadmissible since it was not adversely affected by the decision, as required by A 107, given that its main request was allowed by the OD […]. See the Case Law of the Boards of Appeal, 6th ed. (2010), section VII.E., para. 7.4.2, and, e.g. T 506/91 and T 54/00.

[1.2] The decision in T 386/04 referred to by the patent proprietor is not relevant since in that case the proprietor’s main request had been refused by the OD so that the proprietor was indisputably prejudiced by the decision; the question in the appeal was the admissibility of its main request, not the admissibility of its appeal.

So you better think twice before you withdraw a main request before the OD, even if you feel that the OD will not grant it. If you withdraw the request, you are not adversely affected by its not being allowed, and there will be no possibility to appeal. In other words, when you get what you asked for, you can’t complain.

To download the whole decision, click here.

The file wrapper can be found here.


Roufousse T. Fairfly said...

The decision was sort of balanced in that none of the parties got what they wanted. Chacun en a pris pour son rhume...

Since the only reason why the decision of the opposition division is said by Appellant II to have been wrong is that the relevant claims lack novelty, it follows that its appeal must be dismissed.

Second moral of the story: always raise all possible grounds.

I find it a bit difficult to first convince myself and argue that some subject-matter lacks novelty, and then, just for the sake of it, turn around and decide that some feature makes it after all novel, and proceed to demonstrate why it lacks an inventive step. I feel that weakens the overall logic.

oliver said...


Thanks for having broken the spell of silence on this blog.