T 840/09 – Can’t Complain

Only the patent proprietor filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form, according to the main request on file. The appellant argued that he was adversely affected by the finding of the OD that the priority claim was not valid.

*** Translation of the French original ***

[1] The present appeal does not aim at a modification of the impugned decision as such but only at the acknowledgement of the validity of the priority claim […] to French patent application n° 0304203.

[2] In said decision the OD has established that the patent under consideration as amended according to the main request of the patent proprietor, complied with the requirements of the EPC (and could, therefore, be maintained provided that the conditions laid down in the Implementing Regulations were fulfilled – A 101(3)). The OD has given reasons for this decision. Among the reasons regarding novelty it has considered that the patent could not validly claim the priority of April 4, 2003, which is the filing date of French application FR 0304203.

[3] However, this consideration of the OD does not prevent the decision from having been taken in full conformity with the (main) request of the patent proprietor, and it does not appear in the order (dispositif) of the decision. It simply constitutes a ground (motif) which as such does not have res judicata authority and which does not bind any national jurisdiction.

Contrary to the argument of the appellant […] it is not a “decision which makes it possible to invoke (rend opposables) [against the patent] all documents that have been published between the priority date and the effective filing date, as well as all disclosures, public uses etc. having taken place during that same period of time.” Rather, it is a reasoning supporting the decision which as such has granted, within the framework of an interlocutory decision, the whole (main) request of the patent proprietor as filed before the OD.

[4] In agreement with the established case law of the Boards of appeal (see T 84/02 as an example among a great number of decisions), such a ground, even if it is not in favour of the patent proprietor, does not adversely affect him and, consequently, cannot be challenged pursuant to A 107.

[5] The appellant has referred to decision T 73/88 where the following is stated:

“In the event of an appeal being filed by an opponent, however, if the patentee wishes to contend that such adverse reasoning was wrong [in the case under consideration, to overcome the objections against [the validity of] the priority claim, as in the present case] he should set out his grounds for so contending in his observations […] in reply to the statement of grounds of appeal, by way of cross- appeal.”

He has argued that this sentence showed that the question of whether a priority claim is valid is a claim (prétention) of the patent proprietor because it can be the object of a cross-appeal, and that granting or refusing this right is a substantive decision with regard to a claim of the patent proprietor and not just a simple ground of the decision. Decision T 84/02 cited by the opponents and by the Board and decision T 73/88 are, therefore, contradictory, and, moreover, contrary to balance between the parties.

The Board admits that the expression “by way of cross-appeal” does not fit very well into the procedural system of appeals under the EPC. However, the cited sentence is directed at means of defence of the patent proprietor in the case where an (admissible) appeal has been filed by the opponent. It does not deal with the requirements of A 107 regarding an appeal filed by the patent proprietor and, therefore, it does not support the present argumentation of the patent proprietor. […]

The appeal is inadmissible.

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