Monday 8 December 2014

Does Withdrawing a Main Request Imply that Admissibility of Appeal Is Accepted?

After a first part of the oral proceedings in the opposition underlying the case T2157/10, the Opposition Division had expressed its preliminary opinion that the opposition was considered admissible and then turned to the substantive issues of the case.
The patentee then withdrew its main request and made one of its previous auxiliary requests its new main request. The patent was then maintained in amended form as requested proprietor.
The latter was, however, not satisfied with the decision and filed an appeal, the admissibility of which was obviously questionable because one might wonder if the appellant was not adversely affected by the decision.
The discussion in the oral proceedings in the first instance is summarized by the Technical Board of Appeal as follows (items [1.2] - [1.4]):
During those oral proceedings, the proprietor also raised the issue of whether the opposition was admissible (see minutes, p. 2, 7th par.). After discussion with the parties and deliberation, the opposition division stated that it "consider[ed]" the opposition to be admissible (see minutes p. 3, 5th par.). 
The board takes this to mean that the opposition division expressed its conclusion on this issue, but did not pronounce a decision at this point. Thereafter, the minutes (p. 3, pars. 2 and 3 from the bottom) report that "[t]he chairman asked the proprietor to clarify the requests on file: the rejection of the opposition or to maintain the patent in amended form" and that "[t]he proprietor said that his request was to maintain in amended form."

Hence, the interlocutory decision of the opposition division found in favour of the highest-ranking substantive request of the appellant.  
Moreover, in the board's view, the minutes must be understood to imply that the proprietor no longer requested the opposition division to find the opposition to be inadmissible. Any request to this effect which may have been made before was thereby withdrawn. (emphasis added).
This is how the patentee conceived this situation (cf. item [2.2]):
The subsequent request by the chairman of the opposition division that the proprietor clarify its request was exclusively related to substantive requests. It was clear at the time that what the proprietor was asked to clarify was on the basis of which sets of claims it requested that the patent be maintained. It was also clear, so the argument, that by making the substantive request that the patent be maintained in amended form, and irrespective of the fact that the basis for the amended patent was labelled "main request", the proprietor did not intend to withdraw its procedural request that the opposition be found inadmissible. Rather, maintenance in amended form was requested merely if the opposition division decided that the opposition was admissible.
The board of appeal rejected the appeal as inadmissible. This blogger is wondering whether this result could have been avoided if the patentee had expressed its intentions more clearly: Is it possible to appeal the decision to hold the opposition admissible without at the same time requesting the maintenance of the patent as granted?


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