14 Mar 2018

T 0611/15 - Withdrawing other requests before OD

Key points

  • The appeal of patentee is not admissible, because at the end of the oral proceedings before the OD, he had withdrawn all other requests other than the one the OD allowed. Hence, he was not adversely affected. 
  • The patentee contested that he had withdrawn the other requests. However, the minutes of the OD said so.
  • "  In the absence of any request for correction of the minutes, the Board has to assume that these statements accurately reflect the state of the Proprietor's requests at the end of the oral proceedings before the opposition division." 



EPO T 0611/15 - link


Reasons for the Decision
1. Admissibility of the Appeals - Article 107 EPC
1.1 Proprietor's Appeal
1.1.1 Under Article 107 EPC, first sentence, parties to proceedings may appeal a decision only if they are adversely affected by it. If an appeal does not comply with this requirement the Board of Appeal shall reject it as inadmissible, Rule 101(1) EPC. In the present case the question has arisen whether the Proprietor was adversely affected by the contested decision.
1.1.2 In the contested decision it is stated in paragraph 16 of section I - Facts and submissions that (emphasis added):
"Oral Proceedings were held on 17.10.2014 in the absence of the opponent. At the oral proceedings the granted patent was revoked. The proprietors withdrew all the filed requests and submitted a single additional request for further consideration. The opposition division maintained the patent in amended form based on this request".


1.1.3 This statement gives the impression that the auxiliary request filed at the oral proceedings before the opposition division was the only request which the Proprietor maintained. If that was the case, it would follow that the opposition division's decision, that account being taken of the amendments made according to this auxiliary request the patent and the invention to which it relates meet the requirements of the European Patent Convention, did not adversely affect the Proprietor.
1.1.4 The Proprietor has argued that during the oral proceedings before the opposition division there was a detailed discussion of the main request, the division then announced a formal decision on the main request and thereafter they withdrew only the auxiliary requests filed in writing before the oral proceedings, not the main request.
The Board considers that the minutes of the oral proceedings do not support this assertion. Firstly, the minutes state that the chairman announced that the division was of the opinion that claim 1 of the patent as granted did not meet the requirements of novelty. This is merely the announcement of a conclusion reached in oral proceedings after having heard the parties, not of a formal decision. Secondly, the minutes state on page 4, in paragraph 3 of the section entitled "Auxiliary request VIII" that (emphasis added): "The representative of the proprietor announced that he would withdraw all other requests so that auxiliary request VIII as filed during the oral proceedings represented the main and sole request of the proprietor". This reference to "main and sole request" in the minutes contradicts the Proprietor's argument and gives clear and unequivocal support for the statement in the decision that the "proprietors withdrew all the filed requests and submitted a single additional request for further consideration". In the absence of any request for correction of the minutes, the Board has to assume that these statements accurately reflect the state of the Proprietor's requests at the end of the oral proceedings before the opposition division.
1.1.5 The Proprietor has also argued that the statement that they "withdrew all the filed requests" was to be understood in the sense that they withdrew those requests they had filed in writing and that this did not cover the main request, which was based on the claims as granted, i.e. not a request that had been "filed".
The Board does not find this argument convincing because the main request considered at the beginning of the oral proceedings was also for maintenance of the patent in amended form, based on description pages 3 and 4 that had been filed in writing with the latter dated 4 September 2014. Hence, the expression "filed request" as used in the contested decision is rather to be interpreted in the sense that it covers all the requests pursued by the Proprietor, including the (former) main request.
1.1.6 The Board has also considered whether the statement in the decision that at the oral proceedings "the granted patent was revoked" implies that there was a formal decision on the (former) main request. The Board has concluded that this is not the case. The statement that "the granted patent was revoked" was obviously not used legally correctly as there is nothing in the EPC that provides for the "granted patent" to be "revoked" at the same time as a decision is taken under Article 101(3)(a) EPC on maintenance of the patent as amended. In the specific procedural situation the statement can only mean that maintenance of the granted patent was considered not to be possible.
1.1.7 Also, the Board considered whether a decision on the main request was implied by the fact that in the contested decision, in section III - Opponent's arguments and in section IV - Further prior art, paragraphs 1a to 1d, which are a mixture of the submissions of the parties and reasons for the decision, the opposition division discusses the patent as granted at great length, drawing various conclusions on the substantive issues, inter alia concluding in section IV, paragraphs 1c and 1d that "the granted patent can not be maintained". The Board has concluded that this is not the case because this can be seen as material which has been largely copied and pasted from the opposition division's summons to oral proceedings, perhaps to set the scene for the reasoning given later when coming to the actual decision on the "main and sole request" (labelled auxiliary request VIII).
1.1.8 For the above reasons the Board concludes that the Proprietor's request filed during the oral proceedings before the opposition division was indeed the sole request pending at the end of the oral proceedings. Given that the decision on this request was in favour of the Proprietor it follows that the Proprietor was not adversely affected by the decision and thus not entitled to appeal according to Article 107 EPC. Hence, the Proprietor's appeal is to be rejected as inadmissible, Rule 101(1) EPC.

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