In opposition proceedings, the patentee had requested dismissal of the opposition, or (as an auxiliary request) maintenance on the basis of granted independent claim 3. In his statement of grounds of appeal, he had requested (as a main request) maintenance of the patent on the basis of independent claims 2 and 3 (as granted).
The Board of Appeal held that the patentee was not entitled to appeal. Said the Board:
2.3 In the present case it is clear that the appellants are adversely affected by the Opposition Division's decision not to accede to the then main request. However, as follows from the statement setting out the grounds of appeal and the two new set of claims filed with it as main and auxiliary request, that this decision has not been contested with the appeal.
2.3.1 On page 1 of the grounds of appeal, the appellants state their satisfaction with "the Decision in that claim 3 as granted was maintained". The appeal is actually against the decision of the Opposition Division that "claim 2 as granted was not maintained". [...]
2.3.2 The appellants do not defend the main request as filed before the Opposition Division, wherein claim 2 as granted figured. The grounds of appeal do not address this request at all, let alone indicate any reason for setting aside or amending the decision of the Opposition Division's decision that claim 1 of this request lacks novelty over D1. On the contrary, it is apparent from the grounds of appeal that the appellants no longer dispute that D1 discloses a slide nozzle device having all the features set out in claim 1 as granted, as well as in claim 1 of the main request as filed before the Opposition Division (see sections 2 and 3). Hence, the appellants do not challenge the refusal of this claim by the Opposition Division.The Board continued:
"2.3.4 All this can only be understood to mean that the patent proprietors are not adversely affected by the Opposition Division's decision to dismiss the main request filed in the opposition proceedings, but by the non-maintenance of an independent claim based on claim 2 as granted, in addition to the duly filed (and maintained) independent claim based on claim 3 as granted.
However, the subject-matter of claim 2 as granted was not the subject of an individual request in the opposition proceedings, so that it has not been addressed as such in the decision of the Opposition Division.[...]
2.3.5 The present appeal thus amounts to an attempt to remedy the non-filing of an independent claim based on granted claim 2 in the opposition proceedings, and so aims to extend the protection conferred by auxiliary request 1 allowed by the Opposition Division to the alternative solution of claim 2. This runs contrary to the purpose of appeal proceedings: their function is to give a judicial decision upon the correctness of the decision under appeal. It is certainly not to reopen the opposition proceedings and, as attempted in the present case, give a patent proprietor the opportunity to improve its position by adding an independent claim to a claim set already allowed by the Opposition Division.
2.4 Therefore, in view of the appellants' case, the Board considers that they cannot be regarded as "adversely affected" by the decision of the Opposition Division and thus are not entitled to appeal under Article 107 EPC".All of this does not please our correspondent to adds, a little graphically, "I am reminded of Max Liebermann's verdict: "I can't even eat as much as I now want to vomit".
The IPKat adds, it seems that maintenance of the Main Request at first instance was not sufficient to be adversely affected by its refusal - the appeal needed additionally substantively address why that refusal was wrong. Failure to do this apparently made the party not adversely affected. Merpel is locked in a temporal anomaly - she always thought that "adversely affected" was judged at the time of appeal and wonders how it can be retrospectively lost by what is put in the Statement of Grounds of Appeal (filed up to two months later).