T 0957/22 - An exception to the exceptions to the prohibition of reformatio in peius

Key points

•  "In decision G 1/99 (OJ 2001, 382, headnote), the Enlarged Board of Appeal formulated an exception to the prohibition of reformatio in peius, namely "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 Board, obiter it seems: "The board however agrees with the opponent that this exception does not apply in the case at hand, because the proprietor deliberately withdrew its appeal, and thus waived the possibility of defending its patent in a broader version than that upheld by the opposition division, although it was aware that the board had endorsed in its preliminary opinion the objection under Article 123(2) EPC against the first auxiliary request. In this situation, there is no justification to grant the proprietor back this possibility for reasons of equity, i.e. to establish an exception from the prohibition of reformatio in peius. A party who waives an existing right in full knowledge of the legal situation cannot expect to be granted back this right for reasons of equity."
• G1/99 uses the term '(in)equitable': "if during the appeal proceedings a request is filed by the patent proprietor/respondent in order to meet an objection raised by the opponent/appellant or by the Board to the effect that an amendment introduced in opposition proceedings and held allowable by the Opposition Division does not comply with the requirements of the EPC, and [which objection ] would have the direct consequence that the patent would have to be revoked, then for the reasons given supra in point 13, it would be inequitable for the patent proprietor not to be given a fair opportunity to mitigate the consequences of errors of judgement made by the Opposition Division. Therefore, the patent proprietor may be allowed to file requests in order to overcome this deficiency."
• The point about the proprietor forfeiting its (equitable) rights as a respondent under G1/99 by withdrawing the appeal could be novel. I'm not sure if it is very helpful under the RPBA: an amendment under G 1/99 in reply to an objection in the Statement of grounds of the opponent will have to be made in the reply of the proprietor as a respondent. 
• "Moreover, even if the principles as set out in decision G 1/99 were to be applied to the case at hand, i.e. if the proprietor could benefit from an exception to the principle of reformatio in peius, the decision of the Enlarged Board stipulates that such an exception can only be made if the objection cannot be overcome by two other forms of amendments set out in the headnote of decision G 1/99. However, the proprietor has not argued, nor is it discernible for the board, that claim amendments of these types were not possible."
• G1/99: "In such circumstances, 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.

• I should probably admit here that I don't fully understand the second bullet. 

• Amendments under the first bullet, of course, do not need to invoke the exception to the prohibition of reformatio in peius. They simply restrict the claims further in appeal. 

• Incidentally, the prescribed order can result in rather strange oral proceedings where the opponent identifies claim amendments that, according to the opponent, are allowable (address an intermediate generalisation in the patent as maintained by the OD, e.g. by limiting to the specific embodiment of the drawing or example), and the proprietor argues that they are not allowable (I saw that once). 

EPO 

The link to the decision and an extract of it can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t220957eu1

3.5 While the formulation "consists of" is not clear in the context of claim 1 of auxiliary request 1, see above, the Board notes that substituting this term with "containing" nevertheless broadens the claimed subject-matter, compared to the first auxiliary request found allowable by the opposition division. While the term "consists of" limited the subject-matter of claim 1 of auxiliary request 1 to the components defined in the claim by excluding the presence of any further components, the substitution of this term with "containing" factually deleted this limiting feature, so that granting any one of these requests would put the opponent/appellant in a worse situation than if it had not appealed. This would not be in conformity with the prohibition of reformatio in peius.

3.6 In decision G 1/99 (OJ 2001, 382, headnote), the Enlarged Board of Appeal formulated an exception to the prohibition of reformatio in peius, namely "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".

3.7 The board however agrees with the opponent that this exception does not apply in the case at hand, because the proprietor deliberately withdrew its appeal, and thus waived the possibility of defending its patent in a broader version than that upheld by the opposition division, although it was aware that the board had endorsed in its preliminary opinion the objection under Article 123(2) EPC against the first auxiliary request.

In this situation, there is no justification to grant the proprietor back this possibility for reasons of equity, i.e. to establish an exception from the prohibition of reformatio in peius. A party who waives an existing right in full knowledge of the legal situation cannot expect to be granted back this right for reasons of equity.

3.8 Moreover, even if the principles as set out in decision G 1/99 were to be applied to the case at hand, i.e. if the proprietor could benefit from an exception to the principle of reformatio in peius, the decision of the Enlarged Board stipulates that such an exception can only be made if the objection cannot be overcome by two other forms of amendments set out in the headnote of decision G 1/99. However, the proprietor has not argued, nor is it discernible for the board, that claim amendments of these types were not possible.

3.9 From the foregoing, the board has thus decided that auxiliary requests 2-13 are not admissible.

4. As the main request has been withdrawn, the first auxiliary request is not allowable, and auxiliary requests 2-13 are to be rejected for procedural reasons, there is no basis for maintaining the patent, so that the appeal of the opponent succeeds.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.