T 2154/12 - Party disposition

Key points

• The opposition concerned only granted claims 1-12. The patent as granted also included independent claim 13, with further dependent claims. Nevertheless, the patent was revoked by the OD.
• The Board: " The principle of party disposition only allows the opposition division to decide upon requests as filed by the parties. Since the appellant only had a single request during the opposition procedure, and the opposition division decided that this request contained a claim 1 which did not meet the requirements of the EPC, the opposition division had no choice but to refuse this request as a whole, which, in the absence of any other requests, resulted in the revocation of the patent."

EPO T 2154/12  - link


Reasons for the Decision

5. Request for reimbursement of the appeal fee

5.1 It was advanced on behalf of the appellant that there was no opportunity to file auxiliary requests during the opposition proceedings and the opponent had the last word in the first instance proceedings.

The board notes that with the letter dated 20 January 2010 the appellant filed an amended set of claims 1 to 14 as main request during the opposition proceedings.

With the letter dated 30 July 2010 the opponent responded to this amended set of claims 1 to 14.

The decision of the opposition division was issued on 6 September 2012.

Since the decision was issued more than two years after the last reply of the opponent, the board considers that the appellant had had enough time to file further requests, including a request for oral proceedings. Since the appellant had not done so, it was not up to the opposition division to elicit additional requests from a party in an inter-partes procedure.

5.2 It was further advanced on behalf of the appellant that the opposition division acted incorrectly in revoking the patent as granted as a whole, given that the opposition only concerned granted claims 1 to 12.

The principle of party disposition only allows the opposition division to decide upon requests as filed by the parties. Since the appellant only had a single request during the opposition procedure, and the opposition division decided that this request contained a claim 1 which did not meet the requirements of the EPC, the opposition division had no choice but to refuse this request as a whole, which, in the absence of any other requests, resulted in the revocation of the patent.

It is only in the present appeal proceedings, that the appellant filed auxiliary requests, including one (auxiliary request 6) limiting the subject-matter to the non-opposed parts of the patent in suit.

5.3 It follows that the opposition division did not commit a substantial procedural violation. In consequence, none of the arguments advanced on behalf of the appellant justify the request for reimbursement of the appeal fee (Rule 67 EPC 1973 applicable here).