T 0345/21 - Advanced aspects of reformatio in peius

Key points

• The title is not a tautology. 
• "The patent proprietor lodged an appeal against the interlocutory decision of the opposition division finding that European patent No. 2 737 379 as amended according to auxiliary request 1A met the requirements of the [EPC]"
• "During the oral proceedings held before the opposition division, the sole opponent withdrew its opposition against the patent. The opposition division then continued the proceedings of its own motion in accordance with Rule 84(2) EPC."
• In the contested decision, the opposition division came to the conclusion that the ground for opposition under Article 100(c) EPC prejudiced the maintenance of the patent as granted, that the subject-matter of claim 1 according to auxiliary request 1 filed with letter dated 13 November 2020 was not novel over document SP06"
• This is a rare case where interlocutory revision was possible in an opposition appeal.
• "The [operative] second auxiliary request includes a total of four independent claims: claims 1, 2, 3 and 12. Independent claims 2 and 3 are identical to claims 1 and 2 of auxiliary request 1A on the basis of which the opposition division intended to maintain the patent. "'
• "Since the patent proprietor is the sole appellant in the present case, the maintenance of the patent on the basis of claims that are identical in wording to those of auxiliary request 1A, which the opposition division had found to comply with the EPC, may in principle not be challenged. Otherwise the sole appellant would be put in a worse situation than if it had not filed an appeal. This follows from the prohibition of reformatio in peius, as established in the decision of the Enlarged Board of Appeal G 9/92 "
• "Hence, the board can in principle not examine or object to independent claims 2 and 3 of the second auxiliary request without contravening the principle of prohibition of reformatio in peius. The same applies to dependent claims 4 to 6, 8 and 9 of the second auxiliary request, at least insofar as they depend on independent claims 2 or 3."
• The Board examines the novelty of claim 1.
• "the opposition division concluded that it lacked novelty over document SP06 (Reasons 4 for the decision under appeal). In particular, it was held that the embodiment of the low pressure gradient system ("Niederdruck-Gradientensystem") as shown in Figure 4.2 on page 65 of document SP06"
• "The opposition division's view on feature F1.2 seems to be based on the false premise that for concluding lack of novelty it is sufficient that all claim features are disclosed in the same prior art document. It is well-established in the case law of the Boards of Appeal that, unless there is a clear teaching combining different passages in a document, these passages may not be combined for the examination of novelty"
• "In view of the above, the subject-matter of claim 1 of the second auxiliary request is new over document SP06 (Article 54(1) and (2) EPC)."
• "The board exercised its discretion under Article 111(1) EPC to remit the case to the opposition division for further prosecution."
• "The board finds it fitting to add here that the prohibition of reformatio in peius prevails in principle until the final settlement of the opposition case and, therefore, also in opposition proceedings subsequent to a remittal under Article 111 EPC (T 1843/09, Reasons 2.3.3). The claims setting the framework for reformatio in peius are those according to auxiliary request 1A as held allowable by the opposition division in the decision underlying this appeal".

EPO 

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

T 0943/22 - Withdrawal opposition by respondent

Key points

• The OD maintains the patent in an amended form, finding that the claims as granted lack basis in the application as filed. Both parties appeal. The opponent withdraws the opposition in the course of the appeal.
• The Board finds that the claims as granted do have basis in the application as filed.
• Under Article 111(1) EPC, " The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution".
• Under Rule 84(2) EPC, the EPO may continue the opposition of its own motion if the opposition is withdrawn.
• In T 0228/16, the board remitted the case after the withdrawal of the opposition, in an appeal of the proprietor. The proprietor had successfully argued that the (amended) claims were sufficiently disclosed, thereby overcoming the grounds of the impugned decision.
• The OD after the remittal considered inventive step of the operative set of claims in an interlocutory decision (link) that the patent could be maintained in amended form. 
• The present Board: "While Rule 84(2) EPC (Rule 60(2) EPC 1973) provides that, after withdrawal of an opposition, the European Patent Office may continue the opposition proceedings of its own motion, this option to continue the proceedings after withdrawal of the opposition does not apply in appeal proceedings (G 8/91, OJ EPO 1993, 346, point 7 of the Reasons [*]). The Enlarged Board of Appeal concluded in G 8/93 (OJ EPO 1994, 887) that the withdrawal of the opposition by an opponent who is the sole appellant immediately and automatically terminates the appeal proceedings, even if in the board's view the requirements under the EPC for maintaining the patent are not satisfied. In this case, the opponent was not the sole appellant, and therefore the appeal proceedings had to be continued in view of the still-pending appeal by the proprietor; however, after allowing the proprietor's appeal, taking into account the above-quoted principles established by the Enlarged Board of Appeal, the board may not assess the remaining grounds of opposition raised by the former opponents/interveners. The board's finding that the ground for opposition under Article 100(c) EPC does not preclude the maintenance of the patent as granted implies that the patent is to be maintained as granted."
• *: G 8/91 is really only about a withdrawal of an appeal, and para. 7 of it should be understood in that context, as is clear from the immediately preceding paragraph 6, which speaks of "the withdrawal of the appeal".
• Finally, the order of the decision is that the patent is maintained as granted. As a comment, I understand that under Rule 84(2) the decision (of the OD) is that the opposition is terminated or that the opposition is terminated without a decision. 

EPO 

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

T 0228/16 - Remittal after withdrawal opposition

Key points

• The Board finds that the Main Request, as amended, is sufficiently disclosed.
• About the remittal: “ In view of the withdrawal of the opposition and of the above finding of the Board, a decision under Rule 84(2) EPC, whether the Office continues the opposition proceedings of its own motion, should be taken. The question arises whether this decision should be taken by the Board.”
• The Board remits the case “for further prosecution”.
• The decision is also interesting for the reasons why the claim amendments were admitted in appeal.

EPO T 0228/16 - link

3. Remittal

In view of the withdrawal of the opposition and of the above finding of the Board, a decision under Rule 84(2) EPC, whether the Office continues the opposition proceedings of its own motion, should be taken.

The question arises whether this decision should be taken by the Board.

In the present case, objections under Article 100(a) EPC based on lack of inventive step were raised with the notice of opposition but the opposition division has not yet had the opportunity to consider the issue of inventive step.

Therefore the Board is of the view that the most appropriate course of action under the circumstances of the present case is to exercise its discretion under Article 111(1) EPC and remit the case for further prosecution.

4. In light of the preceding reasoning, oral proceedings were not considered necessary and were thus cancelled.

Order

For these reasons it is decided that:

1. The decision is set aside.

2. The case is remitted to the opposition division for further prosecution.

T 0430/17 - Remittal and withdrawal opposition

Key points

• The proprietor appeals against the revocation of the patent by the OD on the ground of insufficient disclosure. The  Board finds the patent to be sufficiently disclosed.
• The Board remits the case. However, as the only opposition was withdrawn during the appeal proceedings, the Board remits the case with the order for the OD whether to continue the procedure of own motion under Rule 84(2) s.2 EPC.

T 0430/17 -  link

2.5 In Anbetracht der obigen Ausführungen gelangt die Kammer zu dem Ergebnis, dass der Einspruchsgrund nach Artikel 100 b) EPÜ der Aufrechterhaltung des Streitpatents in der erteilten Fassung nicht entgegensteht.

Da die weiteren Einspruchsgründe von der Einspruchsabteilung noch nicht geprüft wurden und zwischenzeitlich der einzige Einspruch zurückgenommen wurde, wird die Angelegenheit an die Einspruchsabteilung zurückverwiesen zur weiteren Prüfung, ob sie das Verfahren von Amts wegen fortsetzt (Artikel 111 (1) EPÜ).

Entscheidungsformel

Aus diesen Gründen wird entschieden:

1. Die angefochtene Entscheidung wird aufgehoben.

2. Die Angelegenheit wird an die Einspruchsabteilung zurückverwiesen zur Ausübung ihres Ermessens nach Regel 84 (2), Satz 2 EPÜ.

T 1558/18 - More than you want in opposition

Key points

• Before the OD, the patentee had filed amended claims as sole request. The two opponents then withdrew their oppositions. The OD then decided to terminate the opposition proceedings under Rule 84(2) EPC, thereby leaving the patent unamended. The patentee appeals.
• The Board finds that there is a substantial procedural violation because the decision violates Article 113(2) EPC. The Board also points out that interlocutory revision under Article 109 should have been granted because the opposition proceedings are now ex parte. 

EPO T 1558/18 -  link

Entscheidungsgründe

1. Antragsbindung (ne ultra petita) - Artikel 113 (2) EPÜ

Die Beschwerdeführerin beantragte im Einspruchsverfahren die Aufrechterhaltung des Patents in geänderter Fassung auf Basis eines mit dem Schriftsatz vom 19. Mai 2017 eingereichten neuen Anspruchsatzes. Dieser galt als einziger Antrag und wurde mit dem Schriftsatz vom 23. April 2018 durch die Einreichung einer angepassten Beschreibung nochmals bestätigt.

Die Aufrechterhaltung des Streitpatents in unveränderter Fassung war somit von der Beschwerdeführerin vor der Entscheidung der Einspruchsabteilung vom 2. Mai 2018 zweifelsfrei nicht mehr beantragt.