Petitions for review rarely succeed, so you would not expect petitioners to go before the Enlarged Board (EBA) light-heartedly and without having a good case to present. Well, sometimes, they do not come up to this expectation; as the present case illustrates, there are some people who do not mind losing 2760 €.
[7.1] The petitioner’s actual complaints are that petitioner had not appreciated that it needed to file amended claims if the patent was to be saved and the Board should have realised this and invited the petitioner to do so.
[7.2] The EBA does not consider that the Technical Board was wrong not to have invited the petitioner to file amended claims, not least because the proceedings were inter partes and the Board was correct to remain strictly neutral. Nor does the EBA consider that the petitioner had any reasonable cause not to have been aware that it needed to file an auxiliary request if it wanted the patent to be maintained in amended form in the event of its main request not being allowed. The Board in its communication had made clear what were the issues in the appeal and to an extent had expressed a view on them. The petitioner says that it did not appear at the oral proceedings because the opponent had said that it was not intending to appear and because the petitioner agreed with what was said in the communication. But the communication gave no indication that the petitioner’s main request was likely to be allowed. To the extent that the communication can be read as indicating what could be considered to be disclosed in the application as filed it was for the petitioner to take this up if it chose to do so, not the Board. The appeal was not, as the petitioner suggests, dismissed because the petitioner had not filed amended requests but because none of the requests which the petitioner had filed were found to be allowable. The Board’s statement that the petitioner had “dispensed” with submitting a revised set of claims simply reflects the fact that the petitioner had not done so.
[7.3] The EBA does not have to go into these issues further, however, because these complaints do not in any event establish a basis for a petition under any of the grounds in A 112a.
NB: “la fleur au fusil” (litt. “with a flower in the (rifle) barrel”) is a French idiom expressing light-heartedness or naivety.
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