Patent proprietor 

(i) Patent proprietor adversely affected

In T 457/89, by analogy with G 1/88 (OJ 1989, 189), the board took the view that the appellant (patentee) was adversely affected by the decision revoking his patent, despite failing to comment on a communication within the time specified in an opposition division's invitation under Art. 101(2) EPC 1973 and R. 58(1) to (3) EPC 1973. For, according to G 1/88, wherever non-compliance could lead to loss of rights, the EPC 1973 always expressly indicated this and Art. 101(2) EPC 1973 made no provision for any loss of rights.

In J 17/04 the board found that although the notice of appeal only referred to a correction of the decision under appeal under R. 88 and 89 EPC 1973 (see T 824/00 below), it made therewith (implicitly) the allegation that the decision under appeal incorrectly limited the regional scope of the patent and that this decision should be set aside. The board was therefore satisfied that the appellant had sufficiently claimed to be adversely affected and the appeal was admissible.

In T 537/05 the appellant was held adversely affected by the decision under appeal granting the patent in an amended form on the basis of the appellant's main request, because this request was not submitted until after the opposition division had 'decided' that the subject-matter did not meet the requirements of Art. 56 EPC 1973. Giving the wording its true meaning, the opposition division had thus revoked the patent, its actions after the decision were ultra vires, and the patent proprietor thus adversely affected and entitled to appeal.

According to T 1351/06, a subsidiary request is only valid if the main request or higher-ranking subsidiary requests are not granted. Under Art. 113(2) EPC 1973, the EPO was bound by the applicant's requests. In the case in point, the main request had not been withdrawn and therefore remained pending. Consequently, the decision to grant a patent on the basis of the subsidiary request was contrary to Art. 113(2) EPC 1973. The appellant had therefore been adversely affected under Art. 107 EPC 1973.

(ii) Patent proprietor not adversely affected

In T 73/88 (OJ 1992, 557) the board ruled that if a patentee's request that his patent be maintained was upheld by a decision of the opposition division, he could not appeal against adverse reasoning in the decision (here, regarding his claim to priority) because he was not adversely affected by it within the meaning of Art. 107 EPC 1973.

One of the principles representing the fundamental value of legal procedural certainty was that a party was not to be regarded as adversely affected within the meaning of Art. 107 EPC 1973 by a decision which granted his final request. A request under R. 88 EPC 1973 for correction of a document as the sole reason for the appeal was inadmissible (T 824/00, OJ 2004, 5). In this case the proprietor had requested correction under R. 88 EPC 1973 of his letter withdrawing all requests (see also T 961/00 and J 17/04).

The argument that the discovery of a prior art disclosure in national proceedings meant that the patent proprietor had subsequently become adversely affected was rejected in T 591/05 - by granting the patent the department of first instance had acceded to the then valid request of the appellant. Furthermore, the suspensive effect of the appeal was a direct consequence of, and was subordinate to the appeal itself (Art. 106(1) EPC 1973) and, consequently, no circumstance directly arising from the suspensive effect of the appeal could be invoked in support of the admissibility of the appeal itself.

In T 332/06 the patent proprietor's appeal was admissible at the time it was filed but became inadmissible when the statement of grounds was received, as the patent proprietor only contested that portion of the decision relating to the claims for the contracting state DE. These claims, had been allowed by the opposition division for DE but rejected with respect to the remaining contracting states. The patent proprietor was therefore not adversely affected with respect to DE.

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