T 1267/10 - Analogous application reformatio in peius

EPO T 1267/10

dated 20 April 2015, [C], for the decision click here

Key point

• In case both the Proprietor and Opponent appeal, a claim request filed not with the Statement of Grounds but with the response to the appeal of the opponent, should generally not involve broadening of the claims, by analogous application of the principle of prohibition of reformatio in peius (G 9/92).

3. Main Request

3.1 Admissibility

Claim 1 as upheld combined the features of granted claim 1 with those of granted claims 6, 8 that clarify the nature of the control and those of claim 9 specifying advance sending of the control message. Vis-a-vis that version claim 1 of the present main request omits the features of granted claim 9, though retaining those of granted claims 1, 6 and 8. The present main request thus pursues a position that is intermediate that of granted claim 1, which the appellant proprietor had defended in first instance, and that of claim 1 upheld, both positions it is undoubtedly entitled to pursue upon appeal. Furthermore, the exclusive focus on the features of granted claims 6 and 8 which define the nature of the control and in particular the relationship between the two controllers can be seen to address the decision's reasoning in this regard against novelty of granted claim 1, cf. page 5, 3rd paragraph. Thus, if the main request could in theory have been filed in first instance, its filing now with the grounds of appeal does not represent a significant departure from the issues considered in the decision under appeal, but is rather seen to be related thereto. It is also not evident that its filing arises from abuse or negligence on the part of the Appellant-Proprietor, or that its admission would otherwise be detrimental to general procedural principles or the rights of the Appellant-Opponent. For these reasons the Board decides to admit the main request into the proceedings, Article 12(4) RPBA.[...]
3.2.8 In the light of the above the Board concludes that the subject-matter of claim 1 of the main request lacks an inventive step, contrary to Articles 52(1) and 56 EPC.
[...]


5. Auxiliary Request 2

5.1 The Appellant-Proprietor has filed auxiliary request 2 with their submission of 14 March 2011 in response to the statement of grounds of appeal by the Appellant-Opponent. In claim 1 of this request the features of granted dependent claims 6, 8 and additionally 9 that were included in claim 1 of the main and auxiliary request 1 respectively (and directed at the nature of the control) are replaced by the features of granted claim 2 concerning communication of a vacuum system parameter from the vacuum system controller to milking system controller. Auxiliary Request 2 thus pursues a different concept from that developed in the main and 1st auxiliary request.

5.2 The Board holds that even though the Appellant-Proprietor was procedurally entitled to react to the appeal of the other party under Article 12(1)(b) and (2) RPBA, and possibly to submit further auxiliary requests, in the present case the submitted response is neither appropriate nor legitimate. Insofar as this request was meant as a response under Article 12(1)b RPBA to the Appellant-Opponent's appeal and the Proprietor is thus considered to act in the procedural position as respondent, the Board holds that the 2nd auxiliary request is inadmissible in its substance, by analogous application of the principle of prohibition of reformatio in peius (G 9/92, Headnote II, OJ EPO 1994, 875). It is apparent that the omission (by replacement) of features of claim 1 as upheld by the decision under appeal puts the Appellant-Opponent in a worse situation. On the other hand, if this request were considered to be filed by the Proprietor in the procedural position of appellant, than it should have been filed with the grounds of appeal pursuant to Article 12(2) RPBA at the latest, or even more preferably already before the first instance, Article 12(4) RPBA. While there is no general principle similar to the prohibition of the reformatio in peius that an appellant cannot improve its substantive position relative to its requests filed with the grounds of appeal, the Board deems it inequitable that the Appellant-Proprietor should be able to do so merely due to the fact that Opponent also appealed and therefore Article 12(1)(b) RPBA formally opened the possibility to make further submissions. It is clear that by filing this request at this stage in the proceedings effectively prevents the Opponent as respondent from submitting any substantive reaction to this request in good time, certainly making it impossible for the Opponent to comply with Article 12(1)(b) or 12(2) RPBA. Thus the submission of the 2nd auxiliary request would be admissible only exceptionally under Article 13 RPBA, which it is not, for the reasons below.

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5.3 The Appellant-Proprietor has further argued that auxiliary request 2 should be admitted for the sake of equitability in view of the Appellant-Opponent's subsequent reliance in the appeal on D1 against the main and auxiliary request 1. This argument is however not supported by the facts of the case. D1 was already cited in opposition against novelty and inventive step of claim 1 as upheld and indeed discussed in the decision under appeal (page 6, 2nd paragraph; reasons IV.1, 3rd paragraph). It is again cited against novelty for that claim in the Appellant-Opponent's statement of grounds, page 1, 2nd paragraph, and again for claim 1 of the new main request in the Appellant-Opponent's response dated 16 March 2011 to the Proprietor's statement of grounds. Its citation cannot have come as a surprise. Even if it had, it would still not justify the omission of features that had been added in opposition to differentiate the claimed invention from such prior art and which up to this point had played a central role in the proceedings, to replace them by other new ones that had not yet been considered. Such a change of tack is for all intents and purposes inequitable and could, if admitted, only fairly be addressed by a remittal to the first instance, as indeed requested by the Appellant-Proprietor at the oral proceedings before the Board. However, a remittal at this late stage is clearly not in the interest of overall procedural economy; cf. Article 13(1) RPBA. In this regard the request also fails to meet the convergence criterion developed under that Article, see CLBA, IV.E.4.4.4.

5.4 For these reasons the Board decided not to admit auxiliary request 2 into the proceedings.

6. The Board concludes that, whereas auxiliary request 2 is not admissible, the patent as amended according to the main request and the auxiliary request 1 fails to meet the requirements of the EPC. Pursuant to Article 101(3)(b) EPC it must therefore revoke the patent.