Tuesday, 31 January 2017

T 648/15 - Can't appeal and bound by reformatio in peius; No way out?

Can't appeal and bound by reformatio in peius; No way out? 

Only the opponent filed an appeal against the decision of the opposition division to maintain a patent in amended form. The main request of the proprietor was granted, so that he couldn't appeal. 
During the proceedings, the board of appeal finds a clarity problem in the amendments allowed in first instance. The proprietor invokes the exceptions to the prohibition of  reformatio in peius of G1/99 to defend the admissibility of his auxiliary requests. This is interesting since G1/99 only refers to Article 123, not to  Article 84. The board still allows it. 

3. Right to be heard - Applicability of G 1/99 concerning auxiliary requests
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3.5 The intention expressed by the respondent when submitting its auxiliary requests was to apply the exceptions to the prohibition of reformatio in peius as set out in the decision of the Enlarged Board of Appeal G 1/99. As a reason for not filing these requests earlier, the respondent argued that it had only understood the clarity objections during the course of the oral proceedings before the Board - although they were already raised in the grounds of appeal and followed up in the communication of the Board. It is nevertheless noted that the respondent had already referred to G 1/99 in its reply to the Board's communication.
3.6 According to G 1/99, in the first place, a non-appealing patentee is essentially bound to defending the form of the patent as found allowable by the opposition division, or to adopt fallback positions from that. The form of the patent as found allowable by the opposition division being held to lack clarity by the Board, the exceptions to the prohibition of reformatio in peius in G1/99 are applicable in regard to any further request filed.
3.7 The headnote in G 1/99 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 pur 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.
3.8 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."
3.9 The three options given in G 1/99 were set out with regard to the requirement of Article 123(2) EPC. However, these options can be applied in a similar way when dealing with the requirement of Article 84 EPC (see also T1380/04, Reasons 1.3). In the current case, the Board is of the view that in particular the first option is readily applicable and requires an amendment introducing one or more originally disclosed features which clarify the relationship between the perimetral zones of the covering surface and the inflatable member with regard to the position of the elastic insert and thus would provide a limitation of the scope of the patent as maintained. In the description - and additionally shown in the Figures - there are several specific embodiments where a clear relationship of these structural elements can be ascertained.
3.10 The appellant referred to point 12 of G 1/99 in order to show that all the options given in the headnote therein would not be applicable. It is correct that the clarity objection was already raised in the opposition proceedings, but it is also noted that the amended form of the patent found allowable by the opposition division was the main request of the proprietor.
3.11 Point 12 of G 1/99 reads as follows:
"It results from the case law of the Enlarged Board of Appeal (see supra point 6), that reformatio in peius should be prohibited because it is the principal task of the Boards of Appeal to review the decision under appeal, not to re-examine the case from scratch. This is not in contradiction with the fact that, with respect to the allowability of amendments made during the opposition procedure, the appeal proceedings are not restricted to the legal and factual background of the proceedings before the Opposition Division. Indeed, objections raised in the first instance may be supported by new facts and new objections may be raised in appeal proceedings with the consequence that the basis on which limitations have been made may still change and it would not be equitable to allow the opponent/appellant or the Board to present new attacks and to deprive the proprietor/respondent of a means of defence. As stated in G4/93, the proprietor/respondent is primarily limited to defending the version of the patent held allowable by the Opposition Division. However, in particular if the patent cannot be maintained for reasons which were not raised at the first instance, the non-appealing proprietor deserves protection for reasons of equity."
3.12 From the foregoing it is clear that the Enlarged Board considered the requirement of equity in appeal proceedings between a non-appealing party and an appellant. In the present case, the proprietor could anyway not have filed an appeal, since its main request was found allowable by the opposition division. The present Board sees that, as a reason of equity, the respondent must be able to defend itself against a decision of the opposition division which, as the Board has now determined, found wrongly in its favour. For the respondent to artificially maintain higher ranking requests merely in order to provide it the possibility of defending itself against possible similar attacks in the appeal proceedings would seem not to have been the purpose envisaged by the Enlarged Board, particularly when it stated that "... in particular if the patent cannot be maintained for reasons which were not raised at the first instance", since it is these "reasons" rather than the underlying arguments which have led the Board to find the main request not allowable.
3.13 The appellant cited T974/10 to support its argument that no request improving the position of the respondent should be allowed if the objection (here, the clarity objection) had been raised during opposition proceedings. The Board notes that in the present case, the patent proprietor could not file an appeal and at the appeal stage is thus faced with the arguments challenging the decision. Not allowing it to file any further requests would amount to denying it the right to fully defend itself against the clarity objection made in the appeal proceedings.
3.14 Accordingly, the principles in G 1/99 are applicable for the present case and the respondent was therefore permitted by the Board to file requests, as long as these were in accordance therewith.
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This decision T 0648/15 (pdf has European Case Law Identifier: ECLI:EP:BA:2016:T064815.20161021. The file wrapper can be found here. Photo by PIRO4D via Pixabay under a CC0  license (no changes made).

1 comment :

  1. The decision is interesting in that it not only applies G 1/99 to added subject-matter in claim maintained by an opposition division, but as well to a lack of clarity in such a claim. It also makes clear that the proprietor is not free to use any one of the three options offered in G 1/99, but that they have to be used in sequence and not ad libitum.

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