Thursday, 10 October 2013

T 2177/12 – You Got What You Wanted

As the present decision shows, a patent proprietor does not necessarily have the right to appeal the decision revoking its patent.

During the opposition proceedings, the patent proprietor had filed the following letter:

The Opposition Division (OD) then revoked the patent.

The patent proprietor then appears to have made up its mind, because it filed an appeal against the decision revoking the patent.

Unsuccessfully. Although some of the arguments presented by the appellant were quite creative, the Board found the appeal to be inadmissible.

Admissibility of the appeal

[1.1] The first sentence of A 107 reads as follows:
“Any party to proceedings adversely affected by a decision may appeal.”
It follows from this sentence that the appeal proceedings are open only to a party which was adversely affected by the impugned decision.

There is ample jurisprudence of the boards of appeal on the question of whether or not a party is adversely affected by a decision. In this respect the present Board agrees with the findings of e.g. T 961/00 [1].
“According to the established jurisprudence of the Boards of Appeal a party is only considered to be adversely affected by a decision if the decision does not accede to its requests (Benkard, EPÜ, EPÜ, Munich 2002, Article 107, Note 13 and the decisions cited therein, Case Law, 4th edition 2001, VII.-D, 7.3.2, and the decisions cited therein).”
“There is therefore an adverse effect if the result of the decision as defined by its order does not come up to the party’s request (T 244/85 [3], T 114/82, T 115/82, Benkard-EPÜ, loc. cit.). Conversely, there is no adverse effect when the decision is consistent with what the party in question has requested (T 506/91 [2.8]).”
[1.2] In the present case there was no explicit final request in the opposition proceedings. In its letter of 27 July 2012 […] the proprietor, in the first sentence, expressly disapproved of the text of the granted patent. In the second sentence, it stated that it did not request maintenance of the patent, and it further indicated that there was no text agreed to by the proprietor. In the last sentence, it drew the attention of the OD to decision T 655/01, which it said set out what had become the standard practice in these circumstances.

The proprietor disapproved of the text of the granted patent. In other words, it withdrew the approval given for grant of a patent in the text proposed in the communication according to R 71(3) EPC of 16 August 2010. This declaration can objectively only be interpreted as meaning that it did not wish the patent to be maintained as granted.

By indicating in the second sentence that it did not request the maintenance of the patent and, further, that there was no agreed text, it not only confirmed that it did not wish the patent to be maintained as granted, but also that it did not want the patent maintained in any form, i.e in any amended form.

T 655/01 concerns a case in which the proprietor, after receiving the summons to oral proceedings in the appeal proceedings, informed the board that it no longer approved the text of the patent as granted and that it considered the proceedings as terminated. The board then concluded, in application of the principle expressed in numerous decisions, that the patent had to be revoked (point [6] of the reasons).

In the present case, by citing this decision at the end of its letter and indicating that this was the standard practice, the proprietor invited the OD to follow that standard practice, i.e. to revoke the patent.

Thus, in the opinion of the Board, when the proprietor, in the same short letter, declares its disapproval of the text of the granted patent, specifically indicates that it is not requesting maintenance of the patent and cites a decision in which, in a similar case, the patent was revoked, this can, on the basis of an objective and bona fide reading, only mean that the proprietor wished the patent to be revoked. Nothing else can objectively be derived from the proprietor’s statement.

Hence the order of the impugned decision of the OD to revoke the patent corresponds exactly to the wish of the proprietor, so that the Board cannot see how it could possibly be adversely affected by the decision.

[1.3] The Board would also like to emphasise that it agrees with the established practice of revoking the patent pursuant to A 113(2) in such procedural situations. As a matter of fact, when a proprietor disapproves of the text in which the patent was granted and does not submit any amended text, this can only mean that it wishes to prevent any text whatsoever of the patent from being maintained. In the absence of any other legal mechanism in the EPC, and since the patent cannot be maintained against the will of its proprietor, revocation on the basis of A 113(2) is the most appropriate way to terminate the proceedings in the interest of legal certainty and without affecting the proprietor.

[1.4] The appellant argued that its letter had to be read as meaning that it wanted closure of the opposition proceedings, not revocation, so that the OD did not accede to its request and consequently it was adversely affected. It also argued that the last but one paragraph of its letter, drawing attention to A 113(2) and in which it was pointed to the fact that there was no agreed text on the basis of which the division could examine the opposition, was an indication that it wanted the file to be closed.

As explained above, the Board considers that from a bona fide reading of the letter it can only be concluded that the proprietor wanted revocation. The Board considers more specifically that even if whatever doubts as to the intention of the proprietor might have been present after having read only the first sentence, in which the proprietor disapproved of the text as granted, these were in any case dissipated by the statement that maintenance of the patent was not requested, by the absence of any proposal for an amended text, and by the citation of a decision in which the patent had been revoked in a similar case. If the proprietor wanted closure of the opposition proceedings or anything else, it should have made that clearer in its letter. The proprietor cannot expect the OD to apply a procedure different from that usual in such procedural situations, if this has not only not been requested, but in addition, as in the present case, case law is cited which supports the usual procedure.

Additionally, even if the proprietor’s letter were to be interpreted as a request for closing the opposition proceedings, the Board fails to see how revocation would have adversely affected the appellant. The appellant submitted that there were possible legal consequences, but failed to indicate what these might be. Nor did it dispute that its disapproval of the text of the granted patent had an ex-tunc effect, as does revocation (A 68), so that in both cases the patent would have been legally deemed non-existent from the outset.

The appellant also submitted that it made a difference for the public, because revocation gave the impression that the patent had been revoked as not in conformity with the EPC, whereas closure of the proceedings did not. The Board does not share this view, because it is clearly apparent from the reasons for the decision under appeal […] that the patent was revoked because the proprietor stated that it no longer approved the text in which the patent had been granted. The public could therefore see that the conformity with the EPC had not been examined.

In a different line of argument, the appellant also submitted that its letter dated 27 July 2012 did not contradict its request to have the oppositions rejected. In the Board’s opinion, since rejection of an opposition means maintenance of the patent, such rejection was made impossible by the proprietor’s disapproval of the text of the granted patent.

Moreover, T 329/88 cited by the appellant concerns a different situation, namely one in which the opponent-appellant did not wish to continue the appeal proceedings after the patent had lapsed in all Contracting States. The Board applied R 60(1) EPC 1973 (relating to the opposition proceedings) mutatis mutandis and closed the proceedings. In the present case there is no opponent-appellant.

[1.5] Furthermore, the appellant argued that the OD could not interpret its letter as a request for revocation because A 105a(2) EPC formally forbade it, and in any case it would be against the case law forbidding the filing of an opposition by the proprietor.

A 105a is part of the set of articles defining the limitation and revocation proceedings introduced in the EPC 2000. These proceedings are open to a proprietor wishing to limit its patent or have it revoked in the absence of opposition proceedings. In such a case the proprietor has to file a request and pay a fee (Article 105a(1)) and the Examining Division will then examine its request (R 91). Article 105a(2) thus forbids the filing of a limitation or revocation request under these specific proceedings (which are subject to payment of the corresponding fee) when opposition proceedings are pending. This is only logical, firstly in order to avoid having two different instances competent simultaneously, and possibly reaching diverging conclusions, and because the proprietor can limit or even request the revocation of its patent during opposition proceedings.

Thus, A 105a(2) does not prevent the proprietor from filing a request for revocation during opposition proceedings, nor does it prevent the OD from dealing with such requests.

Finally, limitation or revocation proceedings are specific proceedings which require formal acts (request, fee, etc.) and are clearly distinct from opposition proceedings as in the present case.

In G 9/93 […] the Enlarged Board of Appeal (EBA) decided that a European patent could not be opposed by its own proprietor. However, this clearly only limits the proprietor’s right to file an opposition but, again, does not prevent the proprietor from filing a request for revocation of its own patent during opposition proceedings initiated by another party.

[1.6] The appellant argued that the OD could not revoke the patent under A 101(3)(b), because this article was limited to cases in which the OD revoked a patent when, after examining amendments, it concluded that at least one ground for opposition prejudiced the maintenance of the patent. In the present case, there was no amended text to examine.

Even if the appellant were right, the Board fails to see how the OD mentioning this article of the EPC would adversely affect the appellant, as this would not have avoided revocation under A 113(2). Nor has the appellant presented any argument, apart from those already set above, as to why this might be the case.

[1.7] For the reasons set out above, the Board considers that the appellant was not adversely affected by the impugned decision, so that the appeal does not fulfil the requirement of A 107 and is to be rejected as inadmissible pursuant to R 101(1).

The Board then dismissed the request for a referral to the EBA and, more interestingly, rejected the request for an apportionment of costs.

Apportionment of costs

[3] The [opponents] argued that the filing of this appeal was an abuse of procedure by the appellant which justified apportionment of costs pursuant to Article 16(1)(e) RPBA. More particularly they submitted that the request for maintenance of the patent as granted was an abuse because it contradicted the final request of the proprietor in the opposition proceedings.

The Board does not share this view.

If a party is of the opinion that the first instance did not accede to its request, it may consider that it was adversely affected by the decision and may consequently decide to file an appeal. This is no more than its legitimate right to avail itself of the appeal procedure provided for in the EPC. When a proprietor, after revocation of its patent, files an appeal, the revocation decision is suspended and any opponents-respondents have to deal with the appellant’s submissions and possibly file replies if they wish to defend the impugned decision. Nothing different has happened in the present case.

Thus, in the present case the Board cannot see any abuse of procedure in a party filing an appeal after disapproving of the text of the patent as granted and obtaining a revocation decision.

Therefore, the requests for apportionment of costs are rejected.

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

The file wrapper can be found here.


Roufousse T. Fairfly said...

WOW! I wasn't dreaming, some applicants REALLY are playing games.

Were they trying to avoid the stigma of a negative decision to protect their position in the US? And if a refusal was unacceptable, what procedural outcome did they expect exactly? Maintenance of a patent without a description or claims?

This application spawned four "divisionals", one of which appears to be a real "division" with claims covering completely different subject-matter. A rarity:

A septum that includes a radiopaque material configured to form a selected pattern when an X-Ray is taken through the septum.

I once earned an in-depth inspection at a German airport because the X-Ray machine operator didn't like the way the wires for my computer accessories were strewn across the suitcase. I had a fantasy about spelling out an explicit expletive message with wire on my next trip. Beamtenbeleidigung mittels Röntgenstrahlung, BGH AZ 0992244/222.

oliver said...

Excellent. Beamtenbeleidigung mittels Röntgenstrahlung. LOL