T 2129/14 - Exception to reformatio in peius

Key points

• The Board allows the patentee-respondent to delete three features compared to the claims as allowed by the OD, as exception to the prohibition of reformatio in peius under G1/99. The Board analyses the deleting of each feature (i.e. requirement) separately.

T 2129/14 - link

Reasons for the Decision

5.5 Reformatio in peius

The appellant argued that the amendments made in claim 1 of the second auxiliary request with respect to the subject-matter of claim 1 of the request found allowable by the Opposition Division (present main request) did not comply with the principle of prohibition of reformatio in peius.

The Enlarged Board of Appeal dealt with this principle and its application to a case like the present one, in which the opponent was the sole appellant, in decision G 1/99. In the Order, the Enlarged Board concluded that:

"in principle, an amended claim, which would put the opponent and sole appellant in a worse situation than if it had not appealed, must be rejected."

Compared with claim 1 of the request found allowable by the Opposition Division, in claim 1 of the second auxiliary request the features that "the hydrophobic filter (20) is attached to the canister (18), the odor vapor filter (23) is attached to the hydrophobic filter (20), and the further hydrophobic filter (22) is attached to the odor vapor filter (23)" have been deleted. Instead, the two hydrophobic filters are claimed to be "an integral part of the canister". As a result of these amendments the second auxiliary request confers protection on systems in which, in particular, the odour vapour filter is not attached to the hydrophobic filters. Hence, the protection is extended with respect to that of the request on the basis of which the patent would have been maintained if the opponent and sole appellant had not appealed. Under such circumstances the opponent and sole appellant is in a worse situation than if it had not appealed. Hence, in principle, the conclusion of the Enlarged Board would apply and the patent would have to be revoked.

However, the Enlarged Board went on to state that:

"an exception to this principle may be made in order to meet an objection put forward by the opponent/appellant or the Board during the appeal proceedings, in circumstances where the patent as maintained in amended form would otherwise have to be revoked as a direct consequence of an inadmissible amendment held allowable by the Opposition Division in its interlocutory decision."

The present case falls under these circumstances, since the deleted features objected to by the appellant during the appeal proceedings had been previously introduced by way of amendment during the opposition proceedings and were held allowable by the Opposition Division in its interlocutory decision.

Lastly, the Enlarged Board laid down the conditions under which the exception may be made:

"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."

As the appellant pointed out, these three conditions are sequential. In other words, a request satisfying merely the third condition should not be allowed if it was possible to satisfy the first or second one.

In the present case, the inadmissible amendment held allowable by the Opposition Division in its interlocutory decision and then deleted in claim 1 of the second auxiliary request concerned four elements of the claimed system and some relationships between them. These four elements are the two hydrophobic filters, the odour vapour filter and the canister. More particularly, it was required that:

- the first hydrophobic filter be attached to the canister;

- the odour vapour filter be attached to the first hydrophobic filter;

- the second hydrophobic filter be attached to the odour vapour filter; and, consequently,

- the odour vapour filter be indirectly attached to the canister and the second hydrophobic filter be indirectly attached to the first hydrophobic filter and the canister.

Further, the Board notes that in claim 1 of the second auxiliary request features have been added which also involve some relationships between those four elements of the system, i.e. that the two hydrophobic filters "are an integral part of said canister" and that the odour vapour filter is "interposed between said first hydrophobic filter [...] and said second hydrophobic filter".

In the Board's opinion, each of the requirements lost by deleting the inadmissible amendment has to be considered together with the added features in the light of the conditions established in G 1/99.

As regards the lost requirement that the first hydrophobic filter be attached to the canister, the addition that the first hydrophobic filter is an integral part of the canister is more specific than the two components being merely attached to each other. Hence, as far as this requirement is concerned, the amendments fall within the first condition for an allowable exception under G 1/99. As a consequence, there is no need to keep in the claim the broader feature that the first hydrophobic filter is attached to the canister.

The addition that the second hydrophobic filter is an integral part of the canister implies an attachment which is more specific than an indirect attachment between the canister and the second hydrophobic filter. Hence, as regards the lost requirement that the canister and the second hydrophobic filter be indirectly attached to each other, the amendments also fall within the first condition for an allowable exception under G 1/99.

Similarly, the additions that the first and second hydrophobic filters are an integral part of the canister imply an attachment between those two filters which is more specific than an indirect attachment. Hence, as regards the lost requirement that the second hydrophobic filter be indirectly attached to the first hydrophobic filter, the amendments also fall within the first condition for an allowable exception under G 1/99.

As regards the lost requirements that the odour vapour filter be attached to the first and second hydrophobic filters and, indirectly, to the canister, the Board considers that in particular the addition of the feature that the odour vapour filter is "interposed between said first hydrophobic filter [...] and said second hydrophobic filter" does not limit the scope of the patent as maintained. The added feature does not imply any form of attachment. Hence, as far as these requirements are concerned, the amendments do not fall within the first condition for an allowable exception under G 1/99. However, in the Board's view, satisfying the first condition for these requirements is impossible in this case. In the original application no form of attachment of the odour vapour filter to the other elements concerned was disclosed either in general or more specific terms. The addition of the feature that the odour vapour filter is "interposed between said first hydrophobic filter [...] and said second hydrophobic filter" constitutes an introduction of an originally disclosed feature, which however extends the scope of the patent as maintained, but within the limits of Article 123(3) EPC, as far as the relationships between the odour vapour filter and the hydrophobic filters are concerned. Hence, to a certain extent, the amendments are in the direction of the second condition for an allowable exception under G 1/99 as regards the lost requirements that the odour vapour filter be attached to the first and second hydrophobic filters.

For the lost requirement of the indirect attachment of the odour vapour filter to the canister, the amendment in claim 1 of the second auxiliary request constitutes a mere deletion, falling within the third condition for an allowable exception under G 1/99. However, for this requirement, neither the first nor the second conditions can be satisfied. The Board is unable to find any part of the original application relating to any form of direct or indirect attachment of the odour vapour filter to the canister. Hence, as regards the lost requirements that the odour vapour filter be attached to the first and second hydrophobic filters and, indirectly, to the canister, the present amendments fall within the second and third conditions for an allowable exception under G 1/99, respectively allowing the deletion of the former inadmissible amendments, and are therefore allowable.

The appellant's argument that an amendment referring directly to figure 1 would have extended by a smaller amount the protection conferred by the claim is not convincing. Due to its schematic nature, figure 1 as originally filed discloses neither more than the relative position of the odour vapour filter with respect to the hydrophobic filters as defined in claim 1 of the second auxiliary request, nor any form of indirect attachment of the odour vapour filter to the canister. Moreover, a reference to the figure such as "a system according to the arrangement of figure 1" would unduly restrict the claim in other aspects not concerned with the deleted inadmissible amendment and, also due to the schematic nature of the figure, would render the scope of the claim unclear.

For these reasons the Board concludes that the amendments made in claim 1 of the second auxiliary request are allowable in view of the exception to the principle of reformatio in peius as established in decision G 1/99.