T 2471/17 - An inescapable reformatio in peius trap

Key points

• In this case, Board 3.3.01 follows Board 3.4.02 in T 2242/18 and the non-appealing patentee is trapped by an amendment it made before the OD.
• The patentee amended claim 1 by adding a feature (not a disclaimer) before the OD. The opponent objected that this amendment violated Art. 123(2). The OD found the amended claim to be allowable. The opponent appeals (only). 
• The Board finds the amendment to lack basis in the application as filed.
• The patentee submits a request deleting the feature at issue. 
• The Board: "In G 1/99 (OJ 2001, 381), the Enlarged Board of Appeal considered it equitable, under certain circumstances, to deviate from the prohibition of reformatio in peius to give the patent proprietor the opportunity to mitigate the effects of an error of judgement made by the opposition division that would have the revocation of the patent as a direct consequence. The error of judgement of the opposition division dealt with in G 1/99 was to allow an amendment which had the effect of limiting the scope of the claims that was objected to in appeal (see point 14 of the Reasons)."
• "the exception to the prohibition of reformatio in peius must be based on a new situation in the appeal proceedings (see G 1/99, Reasons point 12, "reasons which were not raised at the first instance"), which must be causal for the board's divergent opinion (see also T 61/10)."
• To cite the relevant sentence in G 1/99: "However, in particular if the patent cannot be maintained for reasons which were not raised at the first instance, the non-appealing proprietor deserves protection for reasons of equity."
• "The respondent [patentee] did not show, and it was not established, that new reasons against claim 1 of the main request, on account of the feature "increasing serum iron", arose on appeal which would have caused the revocation of the patent. For these reasons, the circumstances of this case do not justify an exception to the prohibition of reformatio in peius, and auxiliary request 1 must be rejected."
• The patent is revoked.

EPO T 2471/17

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t172471eu1.html

4. Admittance, principle of prohibition of reformatio in peius - auxiliary request 1 of 30 April 2019

4.1 As established by Enlarged Board of Appeal Decision G 4/93, if the opponent is the sole appellant against an interlocutory decision maintaining a patent in amended form, the patent proprietor is primarily restricted on appeal to defending the claims held allowable by the opposition division.

4.2 If these claims are not allowable, the principle of prohibition of reformatio in peius applies, i.e. an amended claim which would put the opponent and sole appellant in a worse situation than if it had not appealed must be rejected.

4.3 The scope of claim 1 of auxiliary request 1 is broader than that of claim 1 of the main request held allowable by the opposition division due to the deletion of the limiting feature "increasing serum iron".

4.4 For this reason, auxiliary request 1 runs counter to the principle of prohibition of reformatio in peius. To decide on its admissibility, it must be established whether compelling reasons exist for departing from this principle.

4.5 In G 1/99 (OJ 2001, 381), the Enlarged Board of Appeal considered it equitable, under certain circumstances, to deviate from the prohibition of reformatio in peius to give the patent proprietor the opportunity to mitigate the effects of an error of judgement made by the opposition division that would have the revocation of the patent as a direct consequence. The error of judgement of the opposition division dealt with in G 1/99 was to allow an amendment which had the effect of limiting the scope of the claims that was objected to in appeal (see point 14 of the Reasons).

4.6 In the current case, the respondent argued that it was not obliged to retain the term "increasing serum iron" in all its requests since the appellants/opponents had, in the course of the appeal proceedings, raised objections against this specific term on several grounds (including at least Articles 123(2), 123(3), 84 and 83 EPC). The respondent was therefore entitled to address the objections by pursuing claim requests from which this term had been deleted, in particular as the appellants/opponents had not suggested ways in which the objections could be addressed by limiting or amending the term.

4.7 The board does not come to the same conclusion for the following reasons.

4.7.1 In G 1/99 the Enlarged Board recognises, in point 9.1 of the Reasons, that it is primarily the patent proprietor that is responsible for its claims and bears the risk when submitting amended claims as its main request. In such a situation, the patent proprietor is aware that if the opposition division allows its main request, it will lose the right to file an appeal (because the opposition division's decision does not adversely affect it).

4.7.2 G 1/99 cannot be understood as meaning that this risk is simply removed in just any situation where the opposition division decided in favour of the patent proprietor but the board subsequently disagrees with this assessment.

4.7.3 Rather, the exception to the prohibition of reformatio in peius must be based on a new situation in the appeal proceedings (see G 1/99, Reasons point 12, "reasons which were not raised at the first instance"), which must be causal for the board's divergent opinion (see also T 61/10).

4.7.4 This condition is not met in the case at issue. The objection under Article 123(2) and 76(1) EPC that the features of claim 1 were not specifically disclosed in combination in the application and in the parent application as filed (including the combination of increasing serum iron with the remaining features) was already an issue in the proceedings before the opposition division (see the decision under appeal, point 7.2.1 summarising the opponents' arguments, especially points ii, iv and v). So were further objections under, inter alia, Articles 123(3), 84 and 83 EPC.

4.7.5 The respondent did not show, and it was not established, that new reasons against claim 1 of the main request, on account of the feature "increasing serum iron", arose on appeal which would have caused the revocation of the patent.

4.8 For these reasons, the circumstances of this case do not justify an exception to the prohibition of reformatio in peius, and auxiliary request 1 must be rejected.

5. Further auxiliary requests

5.1 Prohibition of Reformatio in peius

5.1.1 Claim 1 in each of auxiliary requests 1 to 12, 14 and 15 of 30 April 2019 and auxiliary requests 1 to 12, 14 and 15 of 11 June 2018 relates to a compound as defined in claim 1 of the main request (or further limited as being a compound of formula (I)) for second medical use, but the feature of "increasing serum iron" is absent.

5.1.2 The further limiting features present in these claims relate to the type of iron deficiency (functional iron deficiency, iron deficiency associated with anemia or anemia of chronic disease) or the subjects to be treated (mammalian, having iron-restricted or iron-deficient erythropoiesis, having a transferrin saturation of less than 20%, adults with a transferrin saturation of less than 16%). These features do not restrict the scope in such a way as to compensate for the deletion of the feature "increasing serum iron".

5.1.3 As a consequence, the same conclusion as in point 4.8 above also applies to auxiliary requests 1 to 12, 14 and 15 of 30 April 2019 and auxiliary requests 1 to 12, 14 and 15 of 11 June 2018.