T 0962/23 - On the limits of G 1/99

Key points

• G 1/99 provides for an exception to the prohibition of reformatio in peius in case of "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 term 'inadmissible amendment' does not refer to procedural inadmissibility (late-filed) but to issues such as Art. 123(2), but also Art. 84 (see, e.g. T 0648/15), and Art. 83 (when caused by the amendment), see T 1484/18. 
• The Board in the present case: "The feature "and throughout the composite core" contained in auxiliary request 1 as maintained by the opposition division, i.e. the present main request, was not contained in the subject-matter of claim 1 of any of auxiliary requests 2 to 6 and 1-2 to 1-5.

  The appellant argued that the omission of this feature violated the principle of prohibition of reformatio in peius.

  The respondent argued that this principle only applied to claim 1 of the patent as granted but not to an auxiliary request containing further restrictions. Moreover, the deleted features were implicitly contained in the remaining features.

  However, the feature "and throughout the composite core" may be deleted only if the remaining features of claim 1 ensure that it is not broadened with respect to claim 1 as maintained. A further limitation relating to other features of the claim cannot compensate for the broadening implied by the omission.

  The aforementioned requests do not contain any features implying the same limitation, nor do they further restrict the feature "and throughout the composite core" to a narrower definition. Therefore, the omission of the feature "and throughout the composite core" infringes the principle of the prohibition of reformatio in peius because it would put the sole appellant in a worse situation than if it had not appealed.

  These requests are therefore not allowable (see G 1/99, Headword)."

• " The [other] feature "wherein the first beads or the second beads are glass ceramic beads", which was contained in claim 1 of auxiliary request 1 as maintained by the opposition division, i.e. the present main request, was not contained in claim 1 of any of auxiliary requests 3a to 6a.

  The requests in question do not contain any features implying the same scope, or further restricting the feature at issue to a narrower scope.

  The exception of G 1/99 (see the Headword), which relates to an inadmissible amendment, is not applicable. Claim 1 did not inadmissibly contain the deleted feature."

• The Board : "There is also no legal basis for extending to Article 56 EPC the particular situation of an inescapable trap created by the opposition division allowing an amendment which infringes the requirements of Article 123(2) EPC, as claimed by the respondent [ proprietor]."

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• As a comment, the case could be different if there was a lack of priority by the amendment of the 'claims as maintained by the OD' underlying the lack of inventive step.
• See T 1845/16 for an extension of G 1/99 to the case that the added feature is unclear (see also T0887/11 and T 0648/15); and T1484/18 for the case where the added feature causes an Article 83 issue. 
• Suppose that before the OD claim 1 is amended with feature X and held to be novel and inventive according to the OD. The opponent disagrees,and appeals. The opponent is the only appellant and the Board finds the feature to be obvious. Suppose the patent also teaches a feature Y as possibly inventive, but not the combination X+Y. The proprietor appears to be stuck. 

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t230962eu1