T 1440/12 - Filed but not pending requests

Key points:

• Patent proprietor filed with its reply to the Statement of grounds six new requests, and described them as "six auxiliary requests that the proprietor may subsequently choose to rely upon". Hence, the Board considers the requests to be not actually pending, such that the patent is revoked after the main request is found to lack clarity. The patentee did not attend the oral proceedings.

EPO Headnote
In the case of opposition, the intention behind Article 113(2) EPC 1973 is that the EPO may not maintain a patent according to a particular text unless the proprietor has consented unambiguously to the patent being maintained in that form. The "text submitted" is to be understood to mean a text submitted by the proprietor with the clear intention that the patent be maintained according to that text, at least as an auxiliary measure (Reasons, point 10.2).

EPO T 1440/12 -  link

10. The status of the "auxiliary requests"

10.1 Article 113(2) EPC 1973 states the following:

"The European Patent Office shall examine, and decide upon, the European patent application or the European patent only in the text submitted to it, or agreed, by the applicant or the proprietor of the patent."

10.2 In the case of opposition, the intention behind Article 113(2) EPC 1973 is that the EPO may not maintain a patent according to a particular text unless the proprietor has consented unambiguously to the patent being maintained in that form. The "text submitted" is to be understood to mean a text submitted by the proprietor with the clear intention that the patent be maintained according to that text, at least as an auxiliary measure.

10.3 In T 1670/07 (Reasons, point 20), this idea was expressed as follows (in the case of examination):

"According to the principle of party disposition, it is the applicant who sets the framework of the procedure. He must present his requests and the EPO can only decide upon the European patent application in the text submitted to it, or agreed by him (Article 113(2) EPC). From this principle it follows that it is the applicant's obligation to formulate his requests in such a way that the EPO is put in a position to decide on them without any further investigations about what the applicant's petitum is. This means that the exact wording of the claims must be clear and, at the same time, it must be immediately clear for which claims grant of a patent is sought."

10.4 In the present case, although six new requests were enclosed with the reply to the statement of grounds of appeal (see point IV, above), the proprietor did not actually request maintenance of the patent on the basis of any of them, but merely described them as "six auxiliary requests that the proprietor may subsequently choose to rely upon".

The letter of 6 March 2014 included the statement that the "requests in our letter of 30th April 2013 are maintained", which the Board takes to mean that the proprietor's position remained the same: maintenance of the patent was requested on the basis of the main request, and the proprietor might "subsequently choose" to rely on the other requests. No further reference was made to these requests in writing, and the proprietor was not represented at oral proceedings.

10.5 Although the submissions in question were termed "requests", the phrase "that the proprietor may subsequently choose to rely upon" makes it clear that the proprietor was not, at that point, requesting maintenance of the patent based on them, but merely leaving open the possibility that it might choose to make such a request subsequently. In practice, it did not.

In the absence of any clear request, and in the light of the provisions of Article 113(2) EPC 1973, the Board is not empowered to decide whether the patent should be maintained according to the "six auxiliary requests".

11. Conclusion

Taking into consideration the amendments made by the proprietor during the opposition proceedings, the Board judges that the patent and the invention to which it relates do not meet the requirements of Article 84 EPC 1973, and consequently the patent must be revoked according to Article 101(3)(b) EPC.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. European patent No. 1 037 258 is revoked.