T 1671/23 - A carry-over request with broader claims

Key points

• The proprietor presented amended claims as its main request before the OD. The OD found these claims to be allowable. The opponent appeals.
• The Board finds those claims (MR) to lack an inventive step.
• The Board arrives at AR-1. AR-1 is a carry-over request in which a feature is replaced compared to the MR. Hence, one feature of the MR is deleted, and another feature is added.
• The Board holds that the prohibition of reformatio in peius applies, under G 9/92, headnote 2: "If the opponent is the sole appellant against an interlocutory decision maintaining a patent in amended form, the patent proprietor is primarily restricted during the appeal proceedings to defending the patent in the form in which it was maintained by the Opposition Division in its interlocutory decision. Amendments proposed by the patent proprietor as a party to the proceedings as of right under Article 107, second sentence, EPC, may be rejected as inadmissible by the Board of Appeal if they are neither appropriate nor necessary."
• Turning to the exceptions of G1/99: "The board notes that the exceptions referred to by the respondent and set out in G 1/99 only concern amendments made to the patent during opposition proceedings (in particular, the addition of features) which were allowed by the opposition division but found to be unallowable under Article 123(2) EPC during appeal proceedings. In G 1/99, the Enlarged Board only addressed the question whether and under what circumstances a deletion of a limiting feature added during opposition proceedings is permissible. ... The feature removed from claim 1 in auxiliary requests [1]  has not been objected to under Article 123(2) EPC in the appeal proceedings."
• As a comment, G1/99 has been applied by analogy to amendments objected to under Article 84 EPC in appeal (T1845/16) (also T 648/15), and also other cases (see Visser's Annoated EPC, Article 107).
• " Even if G 1/99 was applicable to the deletion of the molar ratio in the present case, said deletion could not be allowed in view of the Enlarged Board's decision. The three conditions under which G 1/99 allows exceptions from the prohibition of reformatio in peius are subject to a strict hierarchy.   ... 
• "The respondent chose the third option without giving any explanation why the first and second options were not possible."  
• "16.12 The board also notes that, although there are no provisions for the prohibition of reformatio in peius in the EPC, the board does not see any reason not to follow the decision G 9/92 of the Enlarged Board of Appeal in this respect."
• The further auxiliary requests with the feature reintroduced were not admitted as late-filed in the appeal. 
• Note that the proprietor submitted the auxiliary request without the feature in its reply to the appeal. The opponent/appellant had raised an objection of reformatio in peius in its rejoinder. The Board indicates that the proprietor/respondent should have filed a further letter before the Board issued the preliminary opinion. 

• EPO 

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

https://www.epo.org/en/boards-of-appeal/decisions/t231671eu1