Key points
- The OD maintains the patent as granted and does not discuss the auxiliary requests filed by patentee in the first instance proceedings. The opponent appeals and logically only discusses the claims as granted. What should the patentee as respondent do in connection with the auxiliary requests, if they were filed without subtantiation before the OD?
- The Board " In the present case, the opposition division's finding in the decision under appeal that the patent under appeal was to be maintained does not release the patent proprietor (respondent) from their obligation to also substantiate further requests. With the auxiliary requests, the respondent requests the maintenance of the patent in amended form, which is expressly covered by the wording of Article 12(2) RPBA 2007, according to which it must be explained on what grounds the patent is to be maintained in amended form. The respondent's "complete case" in the sense of Article 12(2) RPBA 2007 therefore is to be considered to also refer to the auxiliary requests."
- " As set out before, however, the respondent [patentee] has neither in the first instance proceedings nor in the reply to the appeal in any way argued on what grounds the auxiliary requests were deemed to overcome the appellant's objections."
- " It is further to be noted that the appellant [opponent] in the statement of grounds of appeal not only objected to claim 1 of the main request but also presented arguments as to why the subject-matter of the dependent claims of the patent as granted was not patentable, and that at least some of the auxiliary requests were based on those claims. The board therefore does not agree with the respondent that neither the decision under appeal nor the statement of grounds of appeal gave rise to a detailed argument as regards the patentability of the auxiliary requests."
- The auxiliary requests are not admitted.
- The case is not remitted: " However, in the case at hand, the respondent's main request was not allowable and the first to fifth auxiliary requests were not admitted into the appeal procedure. There is thus no factual basis for a remittal of the case to the opposition division and the board consequently has decided to reject the respondent's request to remit the case to the department of first instance."
- The patent is revoked.
EPO
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/03/t-124118-ii-patentee-as-respondent-and.html
