Tuesday, January 31, 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. 

Friday, June 10, 2016 T 1626/11 - Reformatio in peius if all opponents withdraw

Four opponents in this opposition appealed the decision of the opposition division but later withdrew their opposition, leaving the proprietor as the sole appellant. 

In the appeal new evidence was cited and the Board came to the conclusion in a preliminary opinion that the claims allowed by the opposition division cannot be maintained. Furthermore, the proprietor had extended the allowed claim set with additional dependent claims. The board gave the proprietor the protection of reformatio in peius for the claims allowed by the opposition division but did examine the newly added dependent claims.

Friday, April 17, 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.