T 0336/23 - Filing a new main request

Key points

• The proprietor files a new main request, with limited claims, before the OD. The OD revokes the patent. The proprietor appeals. Can the proprietor defend the claims as granted in the appeal?
• "The impugned decision was based on an amended 'main request' (items I.8 and I.9 of the decision under appeal) as the sole request. It does not additionally deal with the patent as granted. That the patent as granted was discussed extensively during the oral proceedings before the opposition division does not change this fact.
• The appellant [proprietor] was also of the view that the patent as granted had never been expressly withdrawn. However, a request can be withdrawn implicitly and there is an implicit withdrawal when the circumstances leave no doubt that the party did not intend to pursue a request
• "Parties are generally required to file requests in a clear order [], implying that there normally cannot be two requests of the same rank. It is therefore not objectionable that the opposition division understood the filing of the amended "main request" as replacing the previous sole and thus "main" request. The term "main request" might not be precise where there is only a single request, but it is frequently used in such a case. Similarly, the appellant used the term "main request" also in relation to their sole request during the appeal proceedings."
• It is not clear whether the opposition division did - as it should have done - clarify the parties' final requests before closing the debate. The minutes of the oral proceedings do not report that the parties were asked to confirm their final requests. Nevertheless, as outlined in T 52/15 (Reasons 1.7), "if a procedural act performed by a party is clear and there are no reasons to suggest that its intentions were not correctly understood, e.g. on account of subsequent actions and/or statements, that party cannot expect not to have to bear the consequences of that procedural act". 
• "the opposition division stated [during the oral proceedings] that "the ground of opposition according to Art. 100(c) EPC prejudices the maintenance of the patent as granted", as reported in the minutes (pages 1-2). However, contrary to the appellant's view, this statement does not form an intermediate decision which automatically forms part of the final decision. It is the consistent view of the boards of appeal that the minutes of oral proceedings are not decisions within the meaning of Article 106 EPC"
• Indeed, oppositions and opposition appeals are no longer a very forgiving game.

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t230336eu1