T 2196/11 - Continuation of opposition after lapse

EPO T 2196/11

For the decision, click here.

Key point

• The case concerns the somewhat unusual case of continuation of opposition-appeal after lapse of the patent in all Contracting States. The Board applies the rules for such case. 
• The opposition-appeal was continued the (appealing) opponent had requested so (following Rule 84(1) EPC) and the patent proprietor had not withdraw approval of the text.
• I wonder whether withdrawal approval of the text would result in termination of the proceedings (as the Board seems to assume) or in revocation of the patent. 

Reasons for the Decision

1. Continuation of the proceedings

Although the respondent (proprietor) had stated that the patent had lapsed in all Contracting States and that no application for restoration had been made in any Contracting State, it did not however withdraw its approval of any text on which the patent could be maintained and indeed it maintained its main request and all of its auxiliary requests. The appellant (opponent) also requested [in response to the Communication under Rule 84(1) EPC) that the opposition proceedings be continued. The stated intention of the appellant (opponent) not to continue proceedings if the patent had irrevocably lapsed is a conditional request over which the Board has no control. Furthermore, by telefax dated 3 July 2015 it explicitly maintained its request that the patent be revoked.

The Board thus continued proceedings.
[After jump: revocation inter alia for failure to amend the description in auxiliary requests]

[...]

5. Auxiliary requests 7 and 8

The Board had already stated in its communication annexed to the summons to oral proceedings, that (with regard to the auxiliary requests) no amended pages of the description had been filed together with the amended claim requests and that accordingly, no complete requests were seemingly available and that the question might arise as to whether any of the requests would be allowable.

With regard to the amendments made by way of auxiliary requests 7 and 8, a feature which was previously in dependent claim 6 was combined with claim 1 as granted. The description in the patent, paragraph 0006, however states which features are provided according to the invention, whereas paragraph 0011 states that the feature which has been introduced from granted claim 6 is merely a feature "according to an additional embodiment" of the invention. Moreover, this feature is in contradiction with the feature referred to in another additional embodiment (see paragraph 0010) which states that the high density zones continuously extend in one (the longitudinal) direction. It is thus evident that even if it were assumed that the claims of the requests 7 or 8 were allowable, the lack of amended description pages which were consistent with the amended independent claim of either request contravenes at least Article 84 EPC according to which the claims should be supported by the description.

Auxiliary requests 7 and 8 are therefore not allowable at least for this reason.

Even if adaptation of the description had been the only objection still open, and the Board has anyway not concluded this to be the case, and although adaptation of the description to be consistent with the claims might have been easily possible, in accordance with Article 15(3) of the Rules of Procedure of the Boards of Appeal, the Board is not obliged to delay any step in the proceedings, including its decision, merely because the parties are not present. (Note: neither party was present at the Oral Proceedings in this case) Moreover, in this case, the respondent had been made fully aware of this situation in the Board's communication and had not reacted with substantive comment nor amended description pages.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.