CABINET CHAILLOT

Decision G1/99 of the EPO Enlarged Board of Appeal relating to the "Reformatio in peius"

Definition of the prohibition of "reformatio in peius" : it is where the rules of court procedure governing appeals prevent a court of appeal from going beyond the requests of the appealing party and putting it in a worse position than it was before it appealed.

Decision G 1/99Definition of the prohibition of "reformatio in peius" : it is where the rules of court procedure governing appeals prevent a court of appeal from going beyond the requests of the appealing party and putting it in a worse position than it was before it appealed.The factsDuring an opposition proceedings (decision T 315/97), the sole opponent lodged an appeal as the sole appellant against the interlocutory decision of the Opposition Division maintaining the patent in amended form. The maintained claim 1 comprised a feature which has been added to claim 1 as granted. During the appeal proceedings, the respondent/proprietor of the patent filed a main request including this feature and a first auxiliary request deleting it.Technical Board of Appeal stated that, although the added feature was based on a passage of the description, it was not able to envisage giving a positive decision on the basis of the main request. It also considered that the deletion of this feature in the first auxiliary request would lead to an extension of the protection conferred by the patent as maintained. Thus, the appellant/opposant would be in a worse situation than if it had not appealed.ReasonsAccording to the decision G 9/92 (or G 4/93) of the Enlarged Board of Appeal :"1. If the patent proprietor is the sole appellant against an interlocutory decision maintaining a patent in amended form, neither the Board of Appeal nor the non-appealing opponent as a party to the proceedings as of right under Article **6**, second sentence, EPC, may challenge the maintenance of the patent as amended in accordance with the interlocutory decision.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 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."Decision T406/86 defines that amendments are "appropriate" if they arise from the grounds for opposition and that amendments should be limited to what is "necessary" in the light of grounds for opposition.The question submitted to the Enlarged Board of Appeal was : "Must an amended claim which would put the opponent and sole appellant in a worse situation than if he had not appealed - e.g. by deleting a limiting feature of the claim - be rejected ?".According to the decision, it is undisputed that when a patent proprietor is the sole appellant, it cannot be placed in a worse position than if it had not appealed. Indeed the opponent may always file a request for the revocation of the maintained patent at the national level.The Enlarged Board of Appeal considers that the non-appealing party may not in principle file a request going beyond the extent of the appeal defined in the appellant's request.As stated in G 4/93, 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.If the Board of Appeal comes to the conclusion that it is not possible to maintain a patent there is no remedy for the patent proprietor, neither at the level of the EPO nor at the national level since no appeal or action may be filed against that decision.In order to decide on the request of the appellant/opponent, the Board of Appeal has to decide whether or not the amended set of claims as maintained by the Opposition Division is patentable. Thereafter, the patent proprietor may be allowed to file requests in order to mitigate the consequences of errors of judgement made by the Opposition Division.Order 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.

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