This is the second appeal concerning EP 2079319. At the end of the first appeal, see T 692/14, the case was remitted to the OD for further prosecution.
The proprietor and both opponents appealed against the OD’s interlocutory decision holding the then AR 7 allowable.
The decision is interesting in two respects. Here we will deal with the admissibility of the MR in appeal.
The opponents’ position
The opponents submitted that the MR should not be admitted into the current, second appeal proceedings. This request corresponds to a request which was filed in the first appeal proceedings as AR 2.
However, it was not filed with the proprietor’s grounds of appeal but, instead, only in reply to the opponents’ grounds of appeal.
In the opponents’ view, this behaviour is to be considered as an abandonment of this request, which should not therefore be admitted into the current appeal proceedings. The opponents referred in this context to case T 446/00. Also, the request was not convergent with the higher-ranking requests filed with the reply.
The board’s position
The board admitted the MR into the current appeal.
The MR was filed as AR 2 in the first appeal proceedings. The then competent board admitted a broader claim request and remitted the case to the opposition division for further prosecution.
The proprietor maintained and re-filed the current MR as AR 8 in the proceedings before the OD.
This request was also formally “admitted” into the proceedings by the OD
This request was not included in the proprietor’s grounds of appeal, but was filed as AR 13 with the proprietor’s reply to the opponents’ grounds of appeal.
The board held that not filing the MR already with its own grounds of appeal, but only in reply to the opponents’ grounds of appeal, cannot be considered as the abandonment of this request.
The MR was filed with the reply to the opponents’ grounds of appeal and thus in compliance with Art 12(3) RPBA20.
For the board, the situation is hence not comparable to that in case T 446/00, in which the proprietor was the sole appellant against a decision of the OD to revoke the patent.
The board considered that the request at stake was in conformity with Art 12(4) and 12(2) RPBA07.
The current MR, which is identical to AR 2 filed during the first appeal proceedings, is convergent with the then MR admitted into the proceedings by the competent board and on the basis of which the case was remitted to the opposition division for further prosecution.
For these reasons, the question of whether this request is allegedly not convergent with higher-ranking requests filed in the current appeal proceedings is irrelevant.
Outcome of the procedure
The board considered the MR allowable and remitted to the OD for adaptation of the description.
A request maintained throughout the procedure before entering appeal cannot be considered as abandoned. Whether there was a second appeal appears irrelevant.
That the request was only filed in reply to the opponent’s grounds of appeal is as well irrelevant if both proprietor and opponent appeal.
It might have been better for the proprietor to file the MR with its own statement of grounds of appeal as then the question of admissibility/abandonment would not have arisen at all.
If the proprietor would have been the sole appellant the story would have ended differently if the request had not been filed within the time limit for filing the grounds of appeal.
It would not have been abandoned, but late filed and Art 13(1) RPBA20 would have applied.
Convergence of requests can play a role in appeal proceedings from the outset, but only for late-filed requests in opposition.