T 1782/11 - Reformatio in peius

Key points

• In this opposition case, only the patentee appealed against the decision to maintain the patent in amended form. The opponent-respondent requests revocation of the patent. This is of course not possible as the most straightforward case of reformatio in peius. The board further finds claim 1 as granted to lack basis in the application as filed. The auxiliary requests are not admitted, because they correspond to requests that had been presented and withdrawn before the OD

Summary of Facts and Submissions

I. The appeal by the patent proprietor is against the interlocutory decision of the opposition division holding that granted claim 1 of European patent EP-B-916 891 went beyond the content of the application as filed and that the documents submitted as auxiliary request met the requirements of the European Patent Convention. [...]

Reasons for the Decision

1. Prohibition of reformatio in peius

In its decisions G 9/92 and G 4/93 (OJ EPO 1994, 875, Headnote I) the Enlarged Board of Appeal concluded that if the patentee was sole appellant against an interlocutory decision maintaining its patent in amended form as in the present case, neither the board of appeal nor the non-appealing opponent (as party to the proceedings as of right under Art. 107, second sentence, EPC 1973) could challenge maintenance of the patent as thus amended. In view of that, a review of the opposition division's decision on the compliance of the auxiliary request with the requirements of the EPC is outside the scope of the present appeal proceedings. Thus, the respondent's request for a revocation of the patent in suit has to be rejected.

[...]

For these reasons, the board concludes that claim 1 as granted goes beyond the content of the application as filed, Article 100(c) EPC 1973.

3. First and second auxiliary requests, admissibility

3.1 Claim 1 of the first auxiliary request is identical to claim 1 of an auxiliary request filed during the opposition proceedings (cf. point 4 and annex I of the minutes of the oral proceedings). Furthermore claim 1 of the second auxiliary request now on file is largely based on this auxiliary request of annex I and differs therefrom only in that it explicitly spells out the previously implicit aspect of a direct or indirect connection between the output connecting means and the apparatus for utilising the gas. It appears from the minutes that the auxiliary request of annex I was submitted during the oral proceedings before the opposition division (cf. point 4) and subsequently replaced with a different auxiliary request (cf. point 9 and annex III of the minutes), thereby effectively withdrawing the auxiliary request of annex I.

3.2 Under Article 12(4) RPBA, a board of appeal has the discretion to refuse the admission of requests which could have been presented or were not admitted in the first-instance proceedings. According to the established jurisprudence of the boards of appeal, this applies all the more to requests that were filed and subsequently withdrawn during the first-instance proceedings, since such a course of events clearly shows that these requests could have been presented in those proceedings (cf. Case Law of the Boards of Appeal of the European Patent Office, 7**(th) edition, 2013, IV.E.4.3.2. c)). Moreover, the withdrawal of the request has prevented the department of first instance from giving a reasoned decision inter alia on the admissibility of the auxiliary request of annex I (cf. points 4 and 9 of the minutes), thereby compelling the board either to give a first ruling on this issues or to remit the case to the department of first instance.

Since the first and second auxiliary requests presently on file are de facto identical to the withdrawn auxiliary request of annex I, they are not admitted into the appeal proceedings under Article 12(4) RPBA.

Order

For these reasons it is decided that:

The appeal is dismissed.