T 2097/10 – React!

This is an appeal against the revocation of the opposed patent by the Opposition Division (OD).

Among other things, the patent proprietor complained that it had been deprived of the possibility to file further requests.

The Board did not see things that way:

*** Translation of the German original ***

[2.4] The [patent proprietor] further criticised that the OD had terminated the proceedings although [the patent proprietor] had announced that it intended to file amended claims.

However, [… the OD] can only decide on the admissibility of requests that have actually been filed; it cannot decide on requests the filing of which was announced.

The [patent proprietor] admitted that it had announced further auxiliary requests but had not filed them.

When the OD interrupts the proceedings in order to examine whether it can reach a decision, the parties have to expect that there will be a decision on the requests on file and that, depending on those requests, this decision may be final and, therefore, lead to the proceedings being terminated.

Moreover, the OD would not respect the principle of impartiality – which governs the opposition proceedings, which are inter partes proceedings of a contentious nature – if it offered a party a further opportunity to file requests after it had dealt with all the requests of the party.

If the OD had invited the patent proprietor to file amended requests after it had discussed [the requests on file] and found them to lack inventive step, this would have been tantamount to favouring one of the parties and would have constituted a clear procedural violation.

The [patent proprietor] has submitted that the OD had announced in advance that it would only admit one single auxiliary request. However, this could not hinder the [patent proprietor] from filing another auxiliary request and, therefore, obtaining an appealable decision on the admissibility of this further request.

[2.5] The Board acknowledges that the course of the oral proceedings cannot be considered to have been absolutely fortunate (uneingeschränkt glücklich), but not to the point that the OD could be said to have committed a substantial procedural violation within the meaning of R 103(1)(a).

Thus the request for reimbursement of the appeal fee cannot be granted either.

The Board would like to point out that it would have been desirable to provide more detailed reasons for the impugned decision and in particular, why documents D18 and D19 were found to be relevant and introduced into the proceedings.

Moreover, as inventive step was also questioned along a new line of argument (Angriffsline) (starting from D7), the OD could have been expected to ask the patent proprietor whether, in view of this new factual situation, it wanted to file the announced amendments before the discussion of inventive step. That this has not happened is regrettable but not fundamentally wrong (grundsätzlich fehlerhaft).

In the end it is the parties that bear the responsibility for reacting to a changed factual situation by filing appropriate requests in due time. They cannot transfer this responsibility to the OD by adopting a wait-and-see attitude.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.