T 0220/22 - Reformatio in peius

Key points

• During the oral proceedings before the OD (minutes), the OD decided that the main request did not meet Art. 83. AR-1 was found to comply with Art. 123(2) but not Art. 84 (the added feature was unclear). AR-2 was found to be novel and inventive, and sufficiently disclosed. However, a new objection under Art. 53(c) was admitted into the procedure and found to be convincing (the method claims encompass methods of treating the human or animal body; because the recited gene editing of "cells" in the claims does not exclude so). 
• The proprietor then submitted AR-3, adding the term 'ex vivo' in the claim. The opponent objected under Art. 123(2), the proprietor explained it was an undisclosed disclaimer under G 1/03,  and the OD found the request allowable. 
• The minutes do not reflect a discussion of whether the disclaimer met all the requirements of G 1/03.
• The grounds of the decision of the OD do not specify which objections the opponent had (necessarily: during the oral proceedings) under Art. 123(2). The OD briefly reasons that the term "ex vivo" excludes treatments of the human or animal body, and addresses the Art. 53(c) objections, and is permitted under G 1/03.
• Only the opponent appeals.
• "In the decision under appeal, the opposition division held that while the method of claim 8 is directed to modifying the genome of a cell, it is not limited to cells as the cells may be part of an organism as detailed in paragraphs [0008] and [0280] of the patent. The "ex vivo" limitation introduced in claims 8, 14, 16 and 17 of the then auxiliary request 3 - now main request - was held to be a disclaimer in accordance with G 1/03 and G 2/03 and thus allowable."
• The Board does not discuss it explicity, but the opponent argues in the SoG, (point 5.6 of the SoG) that it was a positive feature and not a disclaimer, and if it was a disclaimer, then it removed more than necessary, contrary to G 1/03, namely performing the gene editing method on whole living plants which is not excluded by Art. 53(c) (which refers to animals and humans, not to plants). 
• The argument has some merits.
• The Board does not discuss the admissibility of this - seemingly new - attack by the opponent.
• "The board considers that claims 8, 14, 16 and 17 exclude more than is necessary, contrary to G 1/03, as they disclaim methods performed directly on whole living plants, which are not excluded under Article 53(c) EPC (cf. claim 12). Thus, at least claims 8, 14, 16 and 17 of the main request contravene Article 123(2) EPC."
•   In accordance with the principle of prohibition of reformatio in peius, in the circumstances of the present case, the respondent [proprietor] is primarily restricted to defending the patent as maintained by the opposition division (see decisions G 9/92 and G 4/93, both OJ EPO 1994, 875, headnote II). The respondent is accordingly limited to proposing amendments occasioned by the appeal, but without breaching the opponent-appellant's protection against reformatio in peius"
•  Any set of claims which is broader in scope than the set of claims as maintained by the opposition division (current main request) can only be admitted in exceptional circumstances and following the principles developed in G 1/99
•  G 1/99: in order to overcome the deficiency, the patent proprietor/respondent may be allowed to file requests, as follows:

  - in the first place, for an amendment introducing one or more originally disclosed features which limit the scope of the patent as maintained;

  - if such a limitation is not possible, for an amendment introducing one or more originally disclosed features which extend the scope of the patent as maintained, but within the limits of Article 123(3) EPC;

  - finally, if such amendments are not possible, for deletion of the inadmissible amendment, but within the limits of Article 123(3) EPC."

•  Replacement of the term "ex vivo" in claims 8, 14, 16 and 17 by "not a method for treatment of the human or animal body by surgery or therapy" reintroduces and covers methods performed directly on whole plants excluded in the request upheld by the opposition division (i.e. in vivo methods performed on plants) and would therefore worsen the legal position of the appellant contrary to the prohibition of reformatio in peius.

• Since deleting the method claims 8, 14, 16 and 17 would prevent the patent from being revoked, the amendments introduced in these claims, which extend the scope of protection beyond that upheld, cannot be seen as an exceptional possibility for amendment provided for in G 1/99 (supra).

• The auxiliary request at issue is not admitted.

• The patent is revoked.

• G 1/99 provided an interpretation of G 9/92, which held that "the proprietor is therefore primarily limited to defending this version. Any amendments he proposes in the appeal proceedings may be rejected by the Board of Appeal if they are neither appropriate nor necessary, which is the case if the amendments do not arise from the appeal " (r.16). 

• Would a remittal have been possible to deal with the newly admitted attack concerning the disclaimer?

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t220220eu1