Monday 11 April 2011

T 528/08 – On Devolution


Consider a situation where a patent is maintained in amended form by the Opposition Division (OD). Both the patent proprietor and the opponent file an appeal. None of the requests of the patent proprietor corresponds to the claims as maintained by the OD. Does this mean that the patent proprietor has given up those claims? Or does the Board have to examine the set of claims as maintained if it finds the requests that the patent proprietor has filed not to be allowable?

[1.1] The Opponent submitted, that the Proprietor has failed to file a formal request for maintenance of the patent on the basis of the set of claims as maintained by the OD. According to the Opponent this should be a proof that the Proprietor has renounced to this set of claims.

[1.2] With his notice of appeal of 14 March 2008 and the corresponding grounds of appeal of 21 May 2008 the Proprietor requested the patent to be maintained on the basis of the main request as filed during the first instance procedure. With the letter of 15 December 2008 the Proprietor additionally filed an auxiliary request. None of these requests is identical with the set of claims as maintained by the OD.

No further submissions were made concerning the set of claims as maintained, neither did the Proprietor state that he was no longer interested in this set of claims. The Board could not find any explicit indication of such an intention - neither in the grounds of appeal nor in any subsequent submissions filed by the Proprietor.

[1.3] The purpose of the appeal in inter partes procedures is to examine the challenged decision of he first instance on its merits (G 9/91 [18]; T 26/88 [12]). Thus, the principal issue to be answered by the Board of Appeal in inter partes procedures is to decide whether a first instance decision should be upheld or overturned (T 369/91 [6.6]).

The Board’s power is determined by the principle of devolution effect of the appeal (tantum devolutum, quantum appelatum) and by the requests stated by the Appellants in their grounds of appeal (G 9/92 [1,3]; T 1382 (sic) [8]).

[1.4] In the present case, as stated by the Proprietor, his request is to maintain the patent on the basis of the main request as filed during the first instance proceedings. It should be considered that filing an appeal was the only possibility for the Proprietor to defend the patent beyond the claims as maintained in amended form by the department of first instance (G 4/93 [10]). Furthermore, the auxiliary request was only filed with the letter of 15 December 2008 as a reaction to the Board’s communication of 4 June 2008 and the Opponent’s statement of 02 December 2008.

Notwithstanding the fact that in the present case the Proprietor appealed the decision of the OD with the aim of requesting the maintenance of the patent on the basis of a higher ranking set of claims, this alone cannot lead the Proprietor to risk endangering the result which was achieved before the department of first instance (G 9/92 [11]; G 4/93 [12]), all the more that in the absence of a request or reply from the Respondent in appeal proceedings indicating that the decision of the OD should not be amended or cancelled, a Board must still examine and decide whether the appeal is allowable in accordance with A 110 and A 111 (T 501/92 [1.9]).

[1.5] Consequently, if the situation occurs in which the Board does not contemplate revocation of the patent and also does not contemplate to grant a patent on the basis of the higher ranking request as filed by the Proprietor, the appeal of both the Opponent and Proprietor should be dismissed with the consequence that the patent is still maintained in amended form as by the OD. […] 

Having found the main request not to involve an inventive step (and the auxiliary request to violate A 123(3)) the Board then examines the claim as maintained by the OD:

[4.3] Claim 1 of the set of claims as maintained by the OD is identical with Claim 10 of the main request. Therefore, identical considerations as for the main request apply. […]

The patent is revoked.

To read the whole decision, click here.

The file wrapper can be found here.

2 comments:

Michael Thesen said...

isn't this in conflict with the interdiction of "reformatio in peius?" As far as I see, the opponents did not appeal and the patentees situation is worse than before.. (cf. T149/02)

Anonymous said...

As the post starts:

"Consider a situation where a patent is maintained in amended form by the Opposition Division (OD). Both the patent proprietor and the opponent file an appeal."