T 384/08 – There Is An End To The Prohibition

The CAFC may have Pauline Newman, we have Ursula Kinkeldey. I know neither of these ladies personally, but I do know that the patent world owes them lots of decisions well worth reading. Whenever I see a decision by a Board chaired by Mrs. Kinkeldey, (or a dissenting opinion by Mrs. Newman) I look forward to some stimulating and well-argued statements. The present decision is no exception. It deals with interesting aspects of a transfer of opponent status. Can the Board be hindered from examining the allowability of a transfer by the prohibition of reformatio in peius?

[1] An issue in the present proceedings is whether the status of opponent was transferred from the original opponent Protogene Laboratories, Inc. (“Protogene”) to Metrigen, Inc. (“Metrigen”). As a matter of principle, the boards of appeal have to examine the question of party status ex officio before dealing with the substance of the cases (see G 2/04 [3.2.5], specifically addressing a procedural situation where there is uncertainty about the validity of a transfer of opponent status). However, the appellant takes the view that the board is precluded from examining the transfer of opponent status since the transfer was not accepted by the opposition division (OD) and neither Protogene nor Metrigen appealed the decision. The core of appellant’s argument is that its own appeal does not concern this part of the decision (which was favourable to the appellant) so that the issue of the transfer of opponent status remains finally determined and cannot be decided differently without infringing the principle of prohibition of reformatio in peius.

[2] According to the established case law of the boards of appeal, the doctrine of reformatio in peius does not apply separately to each point or issue decided, or to the reasoning leading to the impugned decision (see T 149/02 [3.2.1]). This case law finds a basis in a passage in decision G 9/92 [11] according to which a non-appealing party as a respondent has the opportunity to make what it considers to be appropriate and necessary submissions in the appeal proceedings to defend the result obtained before the first instance [emphasis added by the board].

In decision T 327/92 [1], the board stated the following:

“In the present case the patent was revoked so there is nothing the Board can refuse the Appellant which the OD has not already denied it. The doctrine of reformatio in peius cannot be extended to apply separately to each point decided by the OD. Rather the Board of Appeal must examine all material before the OD [...] as to its relevance to the grounds of invalidity raised in the opposition, and then decide for itself on the requests made on appeal.”

The same view was taken in the decision T 401/95 [2]:

“If an appeal is lodged against an adverse decision of the first instance about the main request, then the whole request is before the Board of Appeal and within its jurisdiction (see decisions T 327/92 [1], T 583/95 [2]). It is the Board’s power and duty pursuant to A 111(1) and A 102(3) to decide for itself upon each matter and each issue with regard to the main request and the Board is not bound by any finding of the decision under appeal. Thus, the Board is empowered to reopen and decide upon matters which have been an issue before the OD [...].”

[3] The above principles apply independently of the nature of the issue decided by the OD in favour of the appellant, i.e. also where the issue concerns the status of a party or the admissibility of an opposition. On numerous occasions, the boards have held that the admissibility of the opposition is an indispensable procedural requirement for the substantive examination of the opposition submissions at every stage of the proceedings (see also G 3/97 [6]). Thus even where an opponent is the sole appellant, the admissibility of its opposition has to be ascertained by the board of appeal on its own motion (see e.g. T 289/91 [2]; T 960/95 [2]). As illustrated by decision T 28/93, this may have the consequence that a decision which rejected an opposition on substantive grounds is set aside and the opposition rejected as inadmissible.

[4] Furthermore, decision T 1178/04 [24] has taken the view that where what is at issue is the admissibility of an opposition or a person’s right to be a party, the principle of no reformatio in peius is of no application. In that case, the OD had considered the transfer of opponent status to be valid, and only the new opponent had appealed the substantive decision. The board considered it to be its duty ex officio to examine the validity of the transfer of the opposition and concluded that this duty arises whether or not the issue has been raised by the proprietor and whether or not it has already been the subject of a decision by the OD. It also followed that it was irrelevant whether or not the proprietor could have appealed or had in fact appealed (see T 1178/04 [34-36]).

[5] The appellant referred to decision T 898/91. In that decision the present board in a different composition was confronted with the situation that the OD had rejected one of several oppositions as inadmissible and had revoked the opposed patent on the basis of the other oppositions. Only the patent proprietor appealed. The board came to the conclusion that the opponent whose opposition was held inadmissible should have appealed that part of the decision if it wished to remain party to the appeal proceedings. In the absence of such an appeal, that part took full legal effect and was not touched by the suspensive effect of the patent proprietor’s appeal (see T 898/91 [1]).

[6] The board understands the approach adopted in decision T 898/91 as resulting in an exception from the general principles set out above (see points 2 to 4 above). If this approach were to be followed, a distinction with respect to the binding effect of findings of the department of first instance would have to be made between a situation where the admissibility of an opposition was accepted by the OD and a situation where it was not accepted: whereas in the first situation the board of appeal is not prevented from reconsidering the issue of admissibility even if the opponent is the sole appellant (see T 289/91, T 28/93 and T 960/95), in the second situation it would be prevented from reconsidering the issue unless the opponent concerned has also filed an appeal.

[7] The board has difficulties in finding a legal justification for such a distinction. Furthermore, the approach adopted in decision T 898/91 leads to the rather unfortunate consequence that one of several opponents whose opposition was rejected as inadmissible but who is fully satisfied with the substantive outcome of the opposition proceedings (e.g. revocation of the patent) would have to file an own appeal merely in order to safeguard its status as a party in appeal proceedings possibly initiated by the proprietor. This would amount to a kind of precautionary appeal which, in the view of the board, is conceptually foreign to the EPC. In addition, awkward procedural situations might then arise if the proprietor does not file an appeal himself. Dealing with the only appeal of one of several opponents whose opposition was held inadmissible if the proprietor does not appeal against the revocation decision, might amount to a legal conundrum: whereas the patent would have to be regarded as finally revoked, the board would still be concerned with the question whether the appealing party was correctly denied its party status.

[8] The board furthermore notes that the procedural situation in the present case which concerns the refusal of a requested transfer of opponent status is not wholly identical to the situation underlying the decision T 898/91 where the relevant issue was the admissibility of one of several oppositions. If in the present case the board considered itself bound by the OD’s determination of the issue of transfer, it would have to treat the original opponent Protogene as respondent and would be barred from examining whether Protogene had lost its opponent status due to a transfer. The board would thus be obliged to accept a person as a party to the proceedings which upon examination might reveal itself as not having a proper status.

[9] The [patent proprietor] has also pointed to the provision of A 106(2), according to which a decision which does not terminate proceedings as regards one of the parties can only be appealed together with the final decision, unless the decision allows a separate appeal. The argument is made that it would follow from this provision that if proceedings for one of the opponents are terminated by the department of first instance, an appeal can be taken from that part of the decision, even if the decision did not make termination a separately appealable matter and even if the decision resulted in the revocation of the patent. The board is unable to see why A 106(2) should be given such an extensive reading. The provision is concerned with the admissibility of appeals against interlocutory decisions. In the present case the OD dealt with all the formal and substantive issues it considered necessary to address in its final reasoned decision. The decision included the issue of transfer of the status of opponent and no separate reasoned decision was taken on this point. Thus there is no need to consider what the procedural consequences would have been if the OD, before taking a final decision, had decided on the issue of transfer of opponent status in a separate reasoned interlocutory decision.

[10] In view of the reasons set out above, the board comes to the conclusion that, notwithstanding the fact that neither Protogene nor Metrigen appealed the OD’s decision, it has to examine the question of the transfer of status of the opponent ex officio before dealing with the substance of the case. The board has noted the appellant’s request to refer, in the context of this issue, three questions of law to the Enlarged Board of Appeal (EBA). However, such a referral is considered to be neither necessary nor appropriate for reaching a decision in the present case. The principles developed by the decisions of the EBA (see in particular G 9/92, G 3/97 and G 2/04) and by the case law of the boards of appeal give a sufficiently clear guidance to the board for determining the issue itself.

To read the whole decision, click here.

NB: This decision has already been reported on the Blog du droit européen des brevets.