Friday, 26 March 2010

EPO appeal board don't have to consider grounds in the order in which the appellant raises them

Picked up this week in the PLC IPIT & Communications weekly e-mail last Friday was news of a European Patent Office (EPO) Board of Appeal decision in Case T 0911/06 - 3.5.02 Hybrid generator apparatus/DA PONTE, 11 November 2009. This was a ruling to the effect that the EPO is not required to consider grounds of appeal in the order in which they are placed by an appellant.

This was an appeal against the refusal to uphold a patent as granted. In its grounds of appeal the appellant first proposed amendments to the patent and then requested a decision on the correctness of the refusal of the Opposition Division to maintain the patent as granted. While grounds of appeal are generally addressed in the order in which they are made, this might lead to a situation in which a "higher-ranking" request would be dealt with without having considered the decision concerning the status of the patent which was the subject of the appeal in the first place. Such an outcome, said the Board of Appeal, was both illogical and inconsistent with the spirit of the appeal procedure; it could also have the effect of depriving other parties of their rights regarding the original decision.


MaxDrei said...

I have not yet read the Decision but your posting set me wondering whether the point of it is that the Board will consider the "Requests" in the order it deems appropriate, regardless which one of them the Appellant labels as its "Main" request. Conversely, I doubt that the Decision has anything to say about the order in which the "grounds" are considered.

Readers, has not the EPO recently complained about poor professionalism on the part of representatives, in the area of formulation of request heirarchies?

Meanwhile Jeremy, thanks very much for the tip to this interesting decision.

Anonymous said...

@Max Drei

The decision deals in fact with changing the order of the requests. The grounds can as always be dealt with in the order the board finds most appropriate.

However, the question arises whether "not-formulated requests" should also be considerd by the board. This would be the logical consequence of the decision, since dealing first with the patent as granted and then as amended by the OD before dealing with the higher requests which amended the maintained version of the claims was done for "legal certainty".
What should happen however when no request is presented on the basis of the claims as granted and/or maintained by the OD? Should these issues also be addressed by the board for "legal certainty", since in case of a remittal the proprietor could reintroduce such requests before the OD?

I doubt that this decision will be followed by other boards, but time will tell.