T 0488/91 (Power of Board of Appeal) of 15.11.1992

European Case Law Identifier: ECLI:EP:BA:1992:T048891.19921115
Date of decision: 15 November 1992
Case number: T 0488/91
Decision of the Enlarged Board of Appeal: G 0004/93
Application number: 82903018.8
IPC class: H04N 5/04
Language of proceedings: EN
Download and more information:
Decision text in EN (PDF, 232.771K)
Documentation of the appeal procedure can be found in the Register
Bibliographic information is available in: EN
Versions: Unpublished | Unpublished v2
Title of application: Vertical sync counter with automatic recognition of TV line standard
Applicant name: MOTOROLA, INC.
Opponent name: (01) N.V. Philips' Gloeilampenfabrieken
(02) Interessengemeinschaft für Rundfunkschutzrechte e.V.
Board: 3.5.01

Headnote

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Relevant legal provisions:
European Patent Convention 1973 Art 112
Keywords: Extent to which contested decision may be amended
Referral to the Enlarged Board of Appeal
Catchwords:

The following two-fold question concerning an important point of law shall be referred to the Enlarged Board of Appeal:

1. Is the Board of Appeal allowed to modify a contested decision to the detriment of the Appellant;

2. if yes, to what extent?

Cited decisions:
-
Citing decisions:
G 0001/99
T 0933/92
T 0266/92

Summary of Facts and Submissions

I. Before the Opposition Division the Patentee presented two new (restrictively amended) sets of claims, the first one filed as a main request and the second one filed as an auxiliary request.

By decision dated 26 April 1991 the Opposition Division maintained the European patent No. 0 091 445 in amended form according to the auxiliary request of the Patentee.

II. By notice of appeal dated 20 June 1991 and received on 24 June 1991 an appeal was lodged by the Appellant (Opponent 02) against this decision requesting revocation of the patent. The appeal fee was received on the same day. The Statement of Grounds dated 14 August was received on 16 August 1991 at the EPO.

III. The Patentee answered by letter of 3 March 1992 requesting the maintenance of the patent as decided by the Opposition Division.

IV. On 15 July 1992 oral proceedings were held before the Board of Appeal. At the end of the oral proceedings the Appellant repeated his request for revocation of the patent. The Patentee now requested maintenance of the patent on the basis of his former main request which had been refused by the Opposition Division and only auxiliarily as maintained by the Opposition Division according to the Patentee's former auxiliary request.

V. The Board decided to continue the proceedings in writing.

Reasons for the Decision

1. The appeal is admissible.

2. The Appellant is requesting revocation of the patent. By requesting maintenance of the patent according to his former main request the Respondent (Patentee) goes beyond the request of the Appellant. The Respondent's request concerns a set of claims whose scope is broader than the one of the claims allowed by the Opposition Division. He does not just counter the Appellant's request by defending the outcome of the (contested) interlocutory decision of the Opposition Division which remained unappealed by him, and he aims not only at achieving dismissal of the appeal but also at a modification of the contested decision putting him in a better position than if no appeal at all had been lodged.

The question arises whether the Patentee is entitled to do so and whether the Board may grant such a request, namely:

Is the Board of Appeal allowed to modify a contested decision to the detriment of the Appellant; if yes, to what extent?

3. By interlocutory decision of 5 October 1992 the Technical Board of Appeal No. 3.2.1 (mechanics) referred two similar cases T 60/91 and T 96/92 with the same question as the one just mentioned to the Enlarged Board of Appeal. The question is pending under G 9/92.

The present case is especially similar to the above referred case T 96/92 insofar as it concerns also a Patentee requesting a broader claim than the one maintained by the interlocutory decision. However the present case is different insofar as the Respondent (Patentee) does not defend his patent as granted by the Examining Division. He is defending it only on the basis of his main request as filed during the opposition proceedings. The claims filed under the main request were already of restricted scope compared to the claims granted by the Examining Division.

Due to this similarity the answer of the Enlarged Board in these parallel cases (G 9/92 - T 60/91 and T 96/92) has a bearing also on the outcome of the present case. If this answer were to have an adverse effect on the rights of a party to the present case, the party's right to be heard could be considered to be violated if the present case were just suspended until the question were answered in the mentioned parallel cases, because the party would not have had the opportunity to comment on an important point concerning its own rights (Art. 113(1) EPC).

Moreover, would the Board suspend the proceedings, such a party would upon resumption of the proceedings, have the opportunity to comment on all points, including those mentioned in the decision by the Enlarged Board in G 9/92. It could then turn out that new aspects arise, which could necessitate a new referral to the Enlarged Board. Also in the light of that it seems expedient to refer the present case which falls under the question pending in G 9/92 directly to the Enlarged Board.

The Board has therefore decided to refer this important point of law by putting anew in respect of the present appeal the same question already pending before the Enlarged Board of Appeal under G 9/92.

Thus the requirements of Article 112(1)(2) EPC are met in the present case.

4. As far as the further reasons for the decision are concerned the Board refers to the ones mentioned in points 2. - 12. of the above mentioned interlocutory decision T 60/91 and T 96/92 of 5 October 1992 (pending under G 9/92).

ORDER

For these reasons, it is decided that:

The following twofold question concerning an important point of law shall be referred to the Enlarged Board of Appeal:

1. Is the Board of Appeal allowed to modify a contested decision to the detriment of the Appellant;

2. if yes, to what extent?

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