Brief outline of the file
The patent is concerned generally with food preparation and in particular with a “Method and system for heating with multi-frequency microwaves”.
The patent is a divisional of EP 07766892/EP 2 055 146. The proprietor appealed the revocation decision of the OD. For the OD the ground of opposition under Art 100(c) applied to claims 1 (method) and 4 (system) as granted. The same applied to AR 1 to 13.
None of the parties commented on the substance of the preliminary opinion given by the board. The proprietor and Opponent 2 had declared that they would not assist at the OP, and the Opponent 1 only requested OP if the decision of the OD was not maintained. The board did not identify any reason to depart from this preliminary assessment and the OP were cancelled.
The board confirmed the decision of the OD that the patent could not be maintained as granted and that none of the requests on file were either allowable as infringing Art 123(2) and Art 76(1), or admissible under Art 12(4) RPBA07, Art 12(1,a) 12(2), 12(6), 13(1), 13(2) RPBA20.
The revocation was thus confirmed.
The proprietor’s requests
On appeal, the proprietor requested, as a MR, that the decision of the OD be set aside and that the patent be maintained as granted.
In the statement of grounds of appeal, the proprietor further requested, as alternatives, that the patent be maintained on the basis of one of AR 1 to 35, 0, 36 to 70, 0a, and 71 to 105, in this order.
Later the proprietor amended its requests and next to the MR filed as an alternative to the MR, that the patent be maintained on the basis of one of AR labelled 0b, 0c, 0, 0a, and 1 to 105, in this order.
For the proprietor, the reasons brought forward in the decision do not establish the alleged non-compliance of the claimed subject-matter with Art 123(2). The proprietor requested
- That the decision be set aside in its entirety and that the matter is remitted to the OD for consideration of the remaining grounds of opposition, unless the Board of Appeal intends to maintain the patent as granted.
- If the board maintains the decision against the MR, and subsequent requests AR1 to AR35, the patent is to be maintained or remitted to the first instance according to AR 0.
- If the board maintains the decision against AR 0, and does not find any subsequent requests AR36 to AR70 allowable, the patent is to be maintained or remitted to the first instance according to AR 0a, or a subsequent request AR71 to AR105 as required to overcome the particular issue/combination of issues at hand.
The board’s position with respect to remittal
For the board, the requests were not clear and required interpretation
The order of the requests disagrees with the one emphasised earlier in the statement of grounds of appeal. Moreover, two further AR, 0b and 0c, were filed and squeezed into the order of the claim requests after submission of the remittal requests without the latter being adjusted. Therefore, and due to the obscure language, the remittal requests are not specified in accordance with Art 12(3) RPBA20.
Regardless thereof, the Board understands the remittal requests such that the proprietor is effectively seeking a positive outcome in appeal on added subject-matter in combination with the board’s maintenance of the patent based on one of its requests – or otherwise remittal of the case to the Opposition Division for their consideration of the grounds for opposition under Art 100(a) and (b).
The board noted that, not only is this upside-down approach contrary to the primary object of the appeal proceedings to judicially review the appealed decision under Art12(2) RPBA20 but it also means that the proprietor only accepts a positive result as the substantive outcome of the appeal proceedings.
For the board, it is inconsistent, under the same circumstances, to request remittal in the event of a negative assessment of the board but not in the event of a positive one, contrary to the prohibition of venire contra factum proprium: “No one may set himself in contradiction to his own previous conduct”
The board was convinced that the appeal should be dismissed for the reasons given, and it can decide the case without undue burden. Special reasons for remittal do not present themselves under Art 11 RPBA20.
For these reasons, the board decided not to remit the case to the OD.
The board referred to Point 2.3 of the reasons in T 379/96, in which the opponents appealed the decision to reject the opposition. In T 379/96 the board found the position of the respondent/proprietor inconsistent to accept the board’s competence for a positive result and to contest it for a negative result. If the proprietor had doubts about the competence of the board he should have raised this question at the outset of the appeal proceedings. The failure to do so and to wait until the end of the proceedings amounts to an inadmissible exercise of a right under the well-established prohibition of “venire contra factum proprium”.
For the sake of argument, the requests for remittal would be unallowable anyway, even if admitted into the proceedings. The proprietor had not presented any arguments why the case should be remitted in the event the appeal looked to be dismissed. In T 379/96 the patent was eventually revoked.
In general, filing a lot of AR at the outset of the appeal procedure and later squeezing some further requests in between, is the best receipt for a negative decision on the admissibility of most of those AR. Any request not admitted by the OD has little chance to be admitted in appeal. Late filed requests in appeal either.
To be told by a board that the way requests were submitted boils down to an “upside-down approach” is anything but flattering.
It is a rare event that a proprietor only accepts a positive result as the substantive outcome of the appeal proceedings, here on Art 123(2). It is to be expected that no board favours such an attitude or behaviour.
The situation here related to Art 123(2) but could apply mutatis mutatis if the claims as granted would neither be novel nor the invention sufficiently disclosed, or if in examination the claims would not be clear. In case the board sets aside the decision or the OD resp. ED on those matters, only then a remittal can be envisaged under Art 11 RPBA20.
What makes the situation worse is that the proprietor not only requested a positive decision but subsequently required remittal for further prosecution in order to examine sufficiency and patentability at large.
A translation of “venire contra factum proprium” could be “you cannot have your cake and eat it”. Would you agree?