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As is usually the case where a party is considered by the EPO to have withdrawn a request, this decision seems harsh.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.
Be careful with your requests, especially if you want to appeal Be careful with your requests, especially if you want to appeal Reviewed by Darren Smyth on Wednesday, December 17, 2014 Rating: 5


  1. There is a slightly unattractive side to the Patentee's argument, though. What they are saying is that if in view of the case raised in the Opposition, they no longer wish to maintain the patent as granted and instead wish to amend it. However, they would rather that the EPO did not look at the case and instead maintain the patent as granted, in a form that they are not willing to defend.

    To put it differently and somewhat more bluntly, they can't think of any arguable reasons why the patent is valid in the light of the Opposition, but would like to maintain it in that form anyway.

    I can't help but wonder if that preyed on the mind of the Board of Appeal?

  2. What a shrewd opening comment from Patently. On the money, no?

    Anybody here up for it, to defend patentee Baldrick's cunning plan?

  3. If a party to an OP is uncertain about the state of the procedure or the pending requests, it is up to this party to request a clarification of the situation, cf. T 71/06, Point 5.3 of the reasons.
    Although the latter is related to an OP in appeal, it applies mutatis mutandis to OP in opposition, for either the proprietor or the opponent.
    The decision taken appears thus correct. The trap of implicit abandonment of requests during OP should never be underestimated.

  4. I've been in an opposition oral proceedings where the Division pushed for withdrawal of a Main Request (which was the claims as granted) because it raised difficult issues. The patentee's attorney did so which made the oral proceedings easier, but of course ran the risk that the client would want to fight for the broader claims at appeal.

    I think an attorney runs a lot of risks in not having the claims as granted as the Main Request because clients so often change their minds, and of course cases get licensed or sold, and so the desired claim scope can change at any time. The attorney will get the blame if you don't retain the option of fighting for broader claims at appeal.

  5. Please will readers keep in mind an additional factor, which makes it entirely rational for patent owners to relinquish a Main Request, namely to keep negative reasoning out of the OD's written decision.

    In these days of PTO Examiners cribbing from the online files of their colleagues in other jurisdictions, and given the vastly superior obviousness reasoning in written decisions from the EPO, as oposed to the so-called reasoning in other jurisdictions, one can well imagine an American client wanting the OD's negative reasoning NOT to be part of the public part of the EPO file.

    Much nicer a short sharp 100% positive written decision out of the EPO, eh?

  6. That’s how raising the EPO’s efficiency works: Find a shortcut, and then close the files. That’s all.

  7. I hear the president was also responsible for shooting JFK, John Lennon and JR. Apparently this was because they'd discovered a secret weapon within the EPO that makes patent attorneys say things they didn't intend and draft claims that are useless for their clients.

    Doesn't surprise me with Dr Evil as the president.

  8. Isn't this why using attorneys experienced in relevant matters (procedure/technology) is good practice?

  9. Anonymous at 16:12

    "Doesn't surprise me with Dr Evil as the president."

    Well done for so bravely exercising your right to freedom of expression. But aren’t you afraid of what might happen to a whistleblower?

    I do hope you are not a member of the Boards of Appeal…

    Sarcasm is a biting weapon that may harm the user as much or more than the target. I do hope that is not the case with this post.

  10. Max Drei,

    Indeed. Sometimes the cribbing is surreptitious, but Australian examiners are admirably more open about it. Standard text in office actions I have seen recently (paraphrased) "We have seen what is happening in Europe, the law is different from here, but the reasoning is one we are happy to adopt".

  11. As to what goes into the decisions written in DG1, the other thread from Merpel started today contains a comment which lays bare the shocking truth about the points system EPO Examiners live under. Any Points System that encourages Examiners to sacrifice Quality by "gaming the System" is a bad System and those Managers who dreamed it up should be seized and marched out of the building before they do any more harm to the Organisation.

    In vogue these days are systems of management which palm all the work off on the customer.
    The EPO President has noted it well. He dumps all the work of controlling Quality on to the Courts of the Member States, downstream, after issue of the patents, concentrating instead on pumping up production rates of issued patents, regardless of any adverse effect on quality.

    In that context, consider Art 123(2) EPC. If a EPI representative pushes through to issue with additional matter in Claim 1, the consequences for his client can be fatal. So, given the dire Quality of many representatives, DG1 worries, gives no benefit of the doubt to Applicant, and is strict. All in the interests of Applicant, all in principle to be commended, and all OK as far as I'm concerned.

    But for how much longer, given a President that penalises the Examiners for examining thoroughly and a community of representatives (in these threads) who do nothing but criticise the Examiners for being too conscientious.

    There is much more of a community of interest between Examiners and representatives than many people in These threads are recognising.

    The President wants to fob off the work to the Courts. But litigation is grotesquely inefficient. Who else wants a shift of the bulk of the work, out of the EPO and into the Courts? Not me.

  12. "concentrating instead on pumping up production rates of issued patents"

    Would that were true.

    Grants since 2006 have been:-
    2006 62780
    2007 54699
    2008 59819
    2009 51969
    2010 58108
    2011 62112
    2012 65687
    2013 66700

    This looks pretty much like a random walk rather than a trend.

    Let us see whether the current disruption results in numbers dropping again in 2014 or whether alleged Stakhanovite tendencies will result in another year of glorious production.

  13. Output has gone up every year that the current president has been in office.

    Just sayin'.


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