T 0724/23 - Reformatio in peius, claims and objections

Key points

• The OD maintains the patent in amended form. The proprietor appeals (only). The Board sees an issue under Article 123(2) with claim 1 as granted. The OD had found the feature at issue to comply with Art. 123(2). May the Board examine the issue in connection with the claims as granted?
• "In its decision, the opposition division had concluded that claim 1 of the patent as granted did not contain added subject-matter in breach of Article 123(2) EPC, but that dependent claims 5 to 7 did. Consequently, the patent could not be maintained as granted. Auxiliary request 1, which the opposition division found allowable, is identical to the patent as granted, except for the deletion of claims 5 to 7."
• "The appellant [proprietor] argued that the Board was not empowered to consider feature [3.4 of claim 1]: the opposition division had found this feature [in claim 1] to comply with Article 123(2) EPC in the decision under appeal, and the patent proprietor was the sole appellant. Therefore, the principle of prohibition of reformatio in peius barred the Board from reopening and deciding upon this question. 
• "The Board disagrees, for the following reasons.
• "It is established case law of the boards of appeal that the prohibition of reformatio in peius relates solely to the legal effect of an appealed decision and cannot be construed to apply separately to each point or issue decided, and particularly not to the reasoning leading to the impugned decision (see CLB, V.A.3.1.1). Therefore, the Board is not precluded from applying its own consideration of feature M3.4 [of claim 1] when examining dependent claims 5 to 7 of the patent as granted [under Art. 100(c) EPC], which were found to be unallowable by the opposition division."
• "The appellant will not be placed in a worse position than it was in as a result of the contested decision even if, as set out below, the Board comes to the conclusion that the main request (patent as granted) is not allowable due to feature M3.4 in claim 1 and that the appeal must therefore be dismissed, thus maintaining unchanged the legal effect of the appealed decision."
• "The appellant's argument that national courts could be influenced to its detriment by the reasoning given in the Board's decision is not convincing either. The ratio decidendi of the decisions of the boards of appeal are not binding on national courts, which have judicial independence in their decisions."
• "Since claims 5 to 7 as granted do not comply with Article 123(2) EPC, the patent cannot be maintained as granted, as concluded by the opposition division in the decision under appeal."
• Claim 5 is dependent.
• The appeal is dismissed. Hence, the patent will be maintained in amended form (provided that the proprietor files the translated amended claims in reply to the invitation that was sent by the EPO shortly after the Board issued their written decision).

EPO 

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

https://www.epo.org/en/boards-of-appeal/decisions/t230724eu1