T 1009/05 – Reformatio Paulo In Peius (*)

In this case, the patent was maintained in amended form by the Opposition Division (OD). Only the opponent filed an appeal. During the oral proceedings (OPs) before the Board of Appeal, the patentee amended claim 1 as follows (with respect to the claim as maintained by the OD): (click to enlarge)

[According to the opponent, the] amendments changed the meaning of the expression in claim 1 “received electronic mail” from that according to granted claim 1. Claim 1 upon which the interlocutory decision was based did not comply with A 123(3) because it covered cases where no transmission error had occurred. Hence admitting the main and first auxiliary requests would be contrary to the principle of a prohibition of reformatio in peius, this principle requiring the respondent to defend the patent in the form in which it was maintained. If the expression “received electronic mail” were understood as that received internally by the e-mail computer from the LAN controller then every mail would fail before it left the electronic mail apparatus, since every received e-mail would be classed as a transmission failure. If however the expression “received electronic mail” were understood as being an electronic mail received by the e-mail computer from the e-mail network then the question arose as to whether a transmission failure had occurred at all; the expression “received electronic mail” had to have a consistent meaning throughout claim 1. [XVIII]

[…] As to the question of reformatio in peius, in the present case, in which only the opponent appealed against the interlocutory decision by the OD, the prohibition of reformatio in peius (see G 9/92 and G 4/93) means that the patentee is primarily restricted in appeal proceedings to defending the patent in the form in which it was maintained by the OD. Hence the patentee would be prevented from returning to the granted claims.

In the present case the board takes the view that the amendments according to the main and first auxiliary requests take the claims forming the basis of the interlocutory decision as a starting point and are aimed at overcoming objections raised in the appellant’s letter and in the debate at the OPs. Thus the amendments are seen as appropriate and necessary to defend the result obtained before the OD. Consequently the board decided to admit the main and first auxiliary requests into the proceedings. [2] 

The claims finally fell for lack of clarity; the patent was revoked.

I find the reasoning of the Board somewhat ‘light’. Perhaps the Board quickly saw the lack of clarity and did not want to spend time on the A 123 issue. If the opponent was right and the amendment constituted an improvement of the patentee’s position with respect to claim 1 as maintained by the OD, then the reasoning of G 1/99 should have been applied.

To read the whole decision, click here.

(*) “Reformation/change to the - a little bit - worse”