T 0711/13 - Not rebutting in opposition

Key points

• " The respondent explicitly decided to not substantiate his opinion that claim 1 according to auxiliary request 7g did not meet the requirements of the EPC. in consequence, the board would have to investigate on its own the grounds for which the respondent argues that the subject-matter claimed in auxiliary request 7g did not meet the requirements of the EPC. The appeal procedure is a judicial procedure [], in contrast to the purely administrative character of the opposition procedure. Since the appeal procedure is less investigative, the board does not further investigate the unsubstantiated objections of the respondent." 
• The patent is maintained on the basis of the Auxiliary request 7g.

EPO T 0711/13 - link 

9. Auxiliary request 7g

9.1 Admissibility

[] The respondent [opponent] did not object to the admissibility of this request. In consequence, the board sees no reason to not admit this request into the proceedings.

9.2 Allowability

The respondent explicitly decided to not substantiate his opinion that claim 1 according to auxiliary request 7g did not meet the requirements of the EPC.

In consequence, the board would have to investigate on its own the grounds for which the respondent argues that the subject-matter claimed in auxiliary request 7g did not meet the requirements of the EPC.

The appeal procedure is a judicial procedure (G 7/91 published OJ 1993, 356, G 8/91 published OJ 1993, 346), in contrast to the purely administrative character of the opposition procedure. Since the appeal procedure is less investigative, the board does not further investigate the unsubstantiated objections of the respondent.

The question of whether a board of appeal can put a sole appellant in a worse position than it was in under the contested decision, or whether there should be prohibition of reformatio in peius was decided in Enlarged Board of Appeal decisions G 4/93 and G 9/92 published OJ 1994, 875). In point 7 of that decision, the Enlarged Board of Appeal considered the binding effect of the appellant's request and that "the EPC does not contain any provisions which stipu­la­te that a decision terminating appeal proceedings must not place an appellant in a worse position than it was in as a result of the contested decision". In consequence, the principle of reformatio in peius does not apply.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance with the order to maintain the patent as amended according to the following version:

- claims 1 to 8 filed as auxiliary request 7g with letter of 5 September 2016,

- description page 2 as filed during oral the proceedings and pages 3 to 14 of the patent specification,

- figures 1 to 22(b) of the patent specification.