4.12.14 Patent revocation

According to G 9/92 and G 4/93 (OJ 1994, 875), in opposition appeal proceedings the extent to which the patent proprietor is entitled to make amendments depends on the result of the first instance proceedings and on whether the patent proprietor himself filed an admissible appeal or is merely the respondent (on this point, see chapter V.A.3.1. "Binding effect of requests – no reformatio in peius").

Where the patent proprietor is appealing against the revocation of his patent, he is entitled to revert to a more broadly worded version of the patent, and in particular the one as granted, even if he had filed a restricted version at the commencement of appeal proceedings (T 89/85; T 296/87, OJ 1990, 195; T 373/96; T 65/97; T 564/98; T 2285/08 and T 476/09). According to T 386/04 an appellant-proprietor, whose patent has been revoked, is entitled to seek maintenance of the patent as granted even though its main request before the opposition division had only been the maintenance of the patent in a more limited form. Only in exceptional circumstances, where it would amount to an abuse of procedure, it should not be allowed to revert to the granted claims. This long standing principle is not contradicted by decisions T 528/93 or T 840/93 (OJ 1996, 335), which are concerned with new claims raising new issues, and is not contrary to the statement by the Enlarged Board of Appeal in decision G 9/91 (OJ 1993, 408) concerning the purpose of an appeal (see also T 1276/05).

In T 933/04, the appellant's main request was derived from the patent as granted. This granted version had not, however, been the subject of the opposition division's decision. It had indicated that the patent as granted (now the main request) was not novel, with the result that it had not been pursued. The board refused to admit the main request because the appellant ought not to have withdrawn it from the proceedings if it had intended to pursue it (see also T 1067/08, T 2075/11).

In T 476/09 the conduct of the appellant did not amount to an abuse of procedure. It was true that the claims of the request before the opposition division were more restricted than the claims of the present requests submitted by the appellant with the statement of grounds of appeal in that the claims before the opposition division defined the external additive to include hydrophobic titanium oxide and hydrophobic silica. However, this definition of the external additive had no bearing on the opposition division's decision. Therefore, the fact that this definition was not contained in the claims of the present requests did not raise any new issues which have not yet been dealt with by the opposition division. Hence, the appellant did not leave the factual and legal scope of the first instance opposition proceedings with its new requests in appeal proceedings.

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