Be careful with your requests, especially if you want to appeal
This moggy noticed a report on the Deltapatents blog of a salutary little decision of T 2157/10 from the Technical Boards of Appeal of the European Patent Office, dated 14 November 2014, and posted on 3 December 2014 [so some work is still being done at the EPO, despite the strikes, notes Merpel].
In opposition Oral Proceedings, the Patentee contested the admissibility of the Opposition. The Opposition Division stated that they considered the Opposition admissible, and "asked the proprietor to clarify its requests on file". At this point, the "[t]he proprietor said that his request was to maintain in amended form."
The patent was maintained in this amended form, and the Patentee then appealed on the admissibility point.
The Board of Appeal considered the appeal inadmissible, because it considered the Patentee not adversely affected by the OD Decision, because the Patentee's top ranked request, maintenance of the patent in amended form, was granted. Thus, by not maintaining as Main Request the maintenance of the patent as granted, the Patentee was effectively considered to have abandoned the admissibility point. If the Opposition was inadmissible, obviously the effect would be that the patent would stand in the form as granted, so the Patentee stating "his request was to maintain in amended form" was not considered compatible with maintaining the admissibility objection.
The Patentee argued, not unreasonably, that the request that they formulated was the top ranked substantive request that was "meant to complement its request to have the opposition found inadmissible", and that this did not imply withdrawal of the procedural request to reject the Opposition as inadmissible, but this argument was rejected. Among other reasons, this position was not considered compatible with the minutes of the Oral Proceedings before the Opposition Division, which were, in the view of the Board, "unambiguous as they stand", and had not been challenged
As is usually the case where a party is considered by the EPO to have withdrawn a request, this decision seems harsh. It is not clear whether what happened at first instance was intentional or inadvertent, but the case does show how easy it is to become considered to have abandoned a line of defence.
This reminds us of two clear practice points:
1) Keep your requests clearly in mind at Oral Proceedings. Abandon the request of maintenance of the patent as granted (rejection of opposition) only if you are absolutely sure.
2) Check the minutes of Oral Proceedings, and if they are inaccurate, the time to contest them is immediately, not on Appeal.
This Kat does feel that the relative lack of procedural rules at Oral Proceedings combines with an increased strictness of the Boards of Appeal on what constitutes a valid appeal to make unintentional outcomes a real danger.
In opposition Oral Proceedings, the Patentee contested the admissibility of the Opposition. The Opposition Division stated that they considered the Opposition admissible, and "asked the proprietor to clarify its requests on file". At this point, the "[t]he proprietor said that his request was to maintain in amended form."
The patent was maintained in this amended form, and the Patentee then appealed on the admissibility point.
The Board of Appeal considered the appeal inadmissible, because it considered the Patentee not adversely affected by the OD Decision, because the Patentee's top ranked request, maintenance of the patent in amended form, was granted. Thus, by not maintaining as Main Request the maintenance of the patent as granted, the Patentee was effectively considered to have abandoned the admissibility point. If the Opposition was inadmissible, obviously the effect would be that the patent would stand in the form as granted, so the Patentee stating "his request was to maintain in amended form" was not considered compatible with maintaining the admissibility objection.
The Patentee argued, not unreasonably, that the request that they formulated was the top ranked substantive request that was "meant to complement its request to have the opposition found inadmissible", and that this did not imply withdrawal of the procedural request to reject the Opposition as inadmissible, but this argument was rejected. Among other reasons, this position was not considered compatible with the minutes of the Oral Proceedings before the Opposition Division, which were, in the view of the Board, "unambiguous as they stand", and had not been challenged
As is usually the case where a party is considered by the EPO to have withdrawn a request, this decision seems harsh. It is not clear whether what happened at first instance was intentional or inadvertent, but the case does show how easy it is to become considered to have abandoned a line of defence.
This reminds us of two clear practice points:
1) Keep your requests clearly in mind at Oral Proceedings. Abandon the request of maintenance of the patent as granted (rejection of opposition) only if you are absolutely sure.
2) Check the minutes of Oral Proceedings, and if they are inaccurate, the time to contest them is immediately, not on Appeal.
This Kat does feel that the relative lack of procedural rules at Oral Proceedings combines with an increased strictness of the Boards of Appeal on what constitutes a valid appeal to make unintentional outcomes a real danger.