Friday, 17 April 2015

T 0887/11: an exception to the prohibition of reformation in peius


I rarely see that the principle of prohibition of reformatio in peius (G 1/99) is discussed in appeal proceeding. In T 0887/11 this is an important point of the discussion between the parties. This appeal extends from a decision of the Opposition Division. The Opposition Division decided that the patent could be maintained with amended claims. The Opponent filed the appeal (appellant)

The main message of G 1/99 was "In principle, an amended claim, which would put the opponent and sole appellant in a worse situation than if it had not appealed, must be rejected." It seems to be a fair principle which provides some security to the appellant. After this general principle, the Enlarged Board of Appeal discusses an exception to this principle: " However, an exception to this principle may be made 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. (...)". 
A first line of reasoning of the Board of Appeal is that the appellant is not in a worse position because a deleted feature in claim 1 of auxiliary request 3A "did not imply any clear structural limitation to the claimed subject-matter". Then the decision becomes a little confusing because, although it seems that there is no reformatio in peius, the Board discusses (most probably for sake of completeness) that the above discussed exception to the principle of prohibition of reformation in peius also applies to this case.



Summary of Facts and Submissions

(...) 

XII. Claim 1 of the [respondents] main request, i.e. the request considered allowable by the opposition division, reads:"Pallet truck (2), comprising:
- a chassis (4),
- a drive motor (3) and a gear box (5) arranged in the chassis (4) of the pallet truck (2),
- a drive wheel (7), wherein the drive motor (3) is arranged to transmit power to the drive wheel (7) via the gear box (5) for driving of the pallet truck (2),
- a tiller arm (6) to be manoeuvred by hand by an operator for adjusting the direction of travel of the pallet truck (2),
wherein the drive motor (3) is fixedly arranged in the chassis (4), the gear box (5) and the drive wheel (7) are interconnected and pivotally arranged in the chassis (4), and the tiller arm (6) is connected to the gear box (5) in such a way that the gear box (5) and the drive wheel (7) together are pivoted when the operator manoeuvres the tiller arm (6),
wherein the tiller arm (6) is attached to the gear box (5) via a tiller arm bracket (21), which is mounted to the gear box (5), and the drive motor (3) is arranged on top of the gear box (5), characterized in that the tiller arm bracket (21) comprises a first portion (25) which extends upwards along the side of the drive motor (3), a plurality of conceivable fastening points for the tiller arm being hereby achieved along the first portion, wherein the tiller arm bracket (21) comprises a second portion (27) which is connected to the first portion (25) and which extends radially inwards on top of the drive motor (3), an attachment point for the tiller arm being hereby achieved which facilitates casing of the drive motor and the gearbox."

(...)

The preamble of claim 1 of auxiliary request 3A is the same as that of claim 1 of the main request, whereas its characterising portion has been amended to read as follows:
"characterized in that the tiller arm bracket (21) comprises a first portion (25) which extends upwards along the side of the drive motor (3), wherein the tiller arm bracket (21) comprises a second portion (27) which is connected to the first portion (25) and which extends radially inwards on top of the drive motor (3),
wherein the first portion (25) is radially separated from the drive motor (3) to avoid interference with the drive motor (3) when the gear box (5) and the drive wheel (7) are pivoted,
wherein the second portion (27) comprises a recess (29) for attachment of the tiller arm (6), and wherein the position of the recess (29) coincides with the motor axis (17) of the drive motor (3),
an attachment point for the tiller arm being hereby achieved which facilitates casing of the drive motor and the gearbox."

(...)

Reasons for the Decision 

Main request

1. Amended claim 1 underlying the impugned decision does not meet the requirements of at least Article 84 EPC because the fastening points feature and the casing feature, both taken from the description of the application as filed and added to the claim during the opposition procedure, render its subject-matter unclear.

1.1 Contrary to the arguments of the respondent, the fastening points feature does not impose any clear structural limitation on the pallet truck of claim 1. The feature in the context of the preceding features defines that by its upward extension along a side of the drive motor a plurality of conceivable fastening points is achieved along the first portion of the tiller arm bracket. The respondent argued that this implies that any first portion of the bracket according to the definition of claim 1 must be suitable for the tiller arm attachment and, inversely, any first portion which would not be suitable for such attachment would not fall under the claim. However the respondent could not convince the Board that embodiments of a first portion existed which fell into the second category, i.e. not being suitable for attachment of the tiller arm to the bracket's first portion. For example, if the first portion would be so thick that the attachment of the tiller arm on its circumferential surface would impede its rotation, the radial sides of such first portion would indeed offer conceivable fastening points. Also there are no particular materials or particular structural configurations of the bracket's first portion which would clearly render it unsuitable for attachment of the tiller arm to it. As pointed out by the appellant, the claim defines that the tiller arm is attached to the bracket and via this bracket to the gear box, implying that torque has to be transmitted from the tiller arm to the wheel via the bracket (and the gear box). If the bracket's first portion would be of such material or structural configuration that the tiller arm could not be attached thereto but would have to be attached to the bracket's second portion, the first portion would still require the presence of certain parts able to transmit the torque, which in turn render exactly these torque transmitting parts of the first portion also suitable as conceivable fastening points. The examples of a bracket with a large hole not falling under the fastening points feature cannot be accepted since, even if for some reason the tiller arm could not be bolted or screwed (and the Board cannot see why this could ever be the case for the material surround the hole), the manner of attachment is not stated. It could equally be by industrial adhesive or by welding for example. The same applies to the respondent's example of a box-section bracket. Therefore any upwardly extending first portion of the tiller arm bracket, intended to transmit steering torque, must be considered to be suitable to achieve a plurality of conceivable fastening points for the tiller arm. The added fastening points feature does therefore not add any clear structural limitation to the previously defined feature "tiller arm bracket comprises a first portion extending upwards along the side of the drive motor".

1.2 Also, the casing feature added to the end of claim 1 renders the claim unclear. The feature immediately preceding the casing feature defines that "the tiller arm bracket (21) comprises a second portion which is connected to the first portion (25) and which extends radially inwards on top of the drive motor (3)". This definition does not exclude that the bracket's second portion comprises another part in addition to the radial extension, for example for fixing the second portion to the bracket's first portion, which could extend parallel along some length to the first portion. Nor is the claim limited to the configuration of the second portion disclosed in the preferred embodiment depicted in Figures 1 to 3 or to the particular embodiment mentioned in paragraph [0014] of the description. The casing feature does not clearly specify at which part of the tiller arm bracket's second portion the attachment point would be achieved "hereby". Also the technical effect sought by the "hereby" achieved attachment point, namely to facilitate the casing of the drive motor and the gear box, does not provide any clear indication for the skilled person how to select the attachment point, in particular since the casing is not even a feature of the pallet truck of claim 1. It remains therefore unclear what further structural limitation to the pallet track might be implied by the casing feature.

(...)

Auxiliary request 3A

3. This request was submitted during the oral proceedings before the Board of Appeal in response to the discussions around the main request and then a third auxiliary request, subsequently withdrawn. Taking into account the criteria referred to above in Article 13(1) RPBA, the Board decided to exercise its discretion to admit auxiliary request 3A into the proceedings. The former clarity objections raised against the main and the first and second auxiliary request are overcome by the amendments. The appellant also did not raise any objection under Article 84 EPC to this claim.

4. Claim 1 is based on the addition of the features of granted claims 4 and 6 to claim 1 of the main request. Its subject-matter is essentially a combination of all originally filed and granted claims 1 to 6 and the casing feature taken from the description, on page 3, lines 10 to 12. Compared to the main request, the fastening points feature has been deleted, and the casing feature added at the end of claim 1 of the main request follows in present claim 1 on from the definitions of the recess for attachment of the tiller arm at the second portion and of its position with respect to the motor axis.

4.1 The appellant objected to the deletion of the fastening points feature based on the argument that it shouldn't be allowed due to the principle of prohibition of reformatio in peius.

4.1.1 The Headnote of the decision G 1/99 of the Enlarged Board of Appel (OJ EPO 2001, 381), on which the appellant relied, reads:
"In principle, an amended claim, which would put the opponent and sole appellant in a worse situation than if it had not appealed, must be rejected. However, an exception to this principle may be made 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.
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."

4.1.2 It appears questionable at all whether the deletion of the unclear fastening points feature, which, as the Board found above, did not imply any clear structural limitation to the claimed subject-matter, could put the appellant in a worse condition than if it had not appealed.

4.1.3 But even if the appellant's situation were considered to be worse, the Board cannot find anything in G 1/99 which would contradict the application of the principles stated therein to the present case.

4.1.4 The appellant did not contest that the only option of overcoming the deficiency created by the inadmissible addition of the fastening points feature to claim 1 consisted in the deletion of this feature, corresponding to the last option mentioned in the headnote of G 1/99. The Board is also convinced that the higher ranking options set out in the headnote of G 1/99 are not available here.

4.1.5 The appellant instead contested that the exception to the general prohibition of reformatio in peius stated in G 1/99 applied in the present case, since its application was limited to cases in which the proprietor was not adversely affected himself.
The Board does not accept the appellant's interpretation of G 1/99. Point 9, referred to by the appellant in this respect, belongs to that section of the reasons in G 1/99, in which the Enlarged Board gives an interpretation of the reasons for its earlier decision G 4/93 (OJ EPO 1994, 875 and footnote). In point 9, the Enlarged Board addresses specifically points 15 and 16 of the reasons for G 4/93, concerning the case where the opponent is the sole appellant. The Enlarged Board distinguishes in point 9.1 of the reasons for G 1/99 between the two possible situations of a respondent-proprietor and concludes that the principle of prohibition of reformatio in peius of G 4/93 applies independently of whether the respondent-proprietor was or was not itself adversely affected by the interlocutory decision. The equivalence of these two situations of the respondent-proprietor and its consequence for the application of the general prohibition is once more expressed in the last sentence of point 9.1, which reads: "This means that, if the version of the patent held allowable by the Opposition Division is also held allowable by the Board, then, because the patent proprietor intentionally accepted this version either by making it the basis of its main request before the Opposition Division or by not filing an appeal, the proprietor/respondent may not in principle request another version of the patent during the appeal proceedings, unless this version is a restriction of the maintained version" (emphasis added by the present Board). In the following points of the reasons for G 1/99 the Enlarged Board states its considerations which led to the order of the decision without again distinguishing between the two possible procedural situations of a respondent-proprietor. The conclusions drawn by the appellant based on Reasons, 9 lack support.
If, based on the general principle of prohibition of reformatio in peius, the respondent were refused the proposed amendments to remedy the clarity objection against the fastening points feature raised in the appeal proceedings, the revocation of the patent would thus be the direct consequence. The Enlarged Board held in point 14 of the reasons for G 1/99 that it would be inequitable to deny the respondent-proprietor in such situation a fair opportunity to mitigate the consequences of errors of judgement of the opposition division. In the present case, the requested deletion of the fastening points feature is appropriate and necessary, and thus admissible.

4.2 The appellant further argued that the meaning of the casing feature, in particular by use of the term "hereby", had been altered and did not correspond to the original disclosure, so that the resulting subject-matter infringed the requirement of Article 123(2) EPC.
The Board also finds this argument unconvincing. The addition of the casing feature to claim 1 of the higher ranking requests is judged to lack clarity since the position of the attachment point for the tiller arm was left unclearly defined (see above). By specifying the recess and its position with respect to the motor axis, the position of the attachment point is now clearly confined to the radial extension of the bracket's second portion and excludes undetermined positions on other parts of the second portion, such as a part extending parallel to the upstanding first portion. The resulting structural limitation corresponds also to e.g. the particular embodiment of the pallet truck disclosed in Figures 1 and 3. Such an attachment point achieved according to the features in claim 1 also contributes to the technical effect of facilitating casing of the drive motor and the gear box defined in claim 1. The meaning of the term "hereby" indeed is altered compared to its (originally unclear) meaning in the original statement of the description on page 3, lines 9 to 12. It has also been clarified, without introducing subject-matter which was not originally disclosed.
The requirement of Article 123(2) EPC is thus met.
Since the subject-matter of claim 1 has been further limited compared to the granted claim, the Board finds that the requirement of Article 123(3) EPC is also met. The appellant did not argue the contrary.

(...) 

Order 

For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the department of first instance for further prosecution.


This decision has European Case Law Identifier: ECLI:EP:BA:2015:T088711.20150305. The whole decision can be found here. Photo "Solo" by Thomas Leth-Olsen obtained via Flickr under CC BY-SA 2.0 license (no changes made).

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