T 0934/02 of 29.04.2004

Appeal of the patent proprietor based on a new request for amendment (admissible)
Main request rejected in the opposition division decision- formulation attempt, not partial surrender
Inventive step (yes)

I. An appeal of the patent proprietor is to be considered sufficiently substantiated within the meaning of Article 108, third sentence EPC by filing amended claims which deprive the contested decision of its basis, even though it does not state any specific reasons why the contested decision is wrong. It is therefore not necessary and would also be pointless for the purposes of adequately substantiating an appeal, to file grounds in support of a version of a claim that the appellant (patent proprietor) no longer defends in the appeal proceedings. (see point 2 of the reasons).
II. Where a patent proprietor appeals against an interlocutory decision, maintaining a patent in amended form in accordance with an auxiliary request the main request rejected by the opposition division is to be considered as a formulation attempt which does not prevent the patent proprietor from submitting in the appeal proceedings a new main request having a claim 1 broader in scope than that of the rejected main request but narrower than that of the granted version (see point 3 of the reasons).