In this case the patent was opposed on the grounds based on A 100(a), (b) and (c). During the proceedings, the opponent withdrew its objection based on A 123(2) against the feature “at regular intervals”. The Opposition Division (OD) finally maintained the patent in amended form. New claim 1 still contained the feature “at regular intervals”. Only the patent proprietor filed an appeal. Before the Board, the opponent requested a remittal to the OD and justified this request by invoking a fundamental deficiency: according to the opponent, the OD coerced it to withdraw the objection based on A 123(2).
[2.1] Before descending on the substantive merits of the claim requests on file, the Board needs to examine whether the case may require a remittal to the department of first instance as a result of the alleged substantial procedural violations, as requested by the [opponent].
[2.2] In this respect, the Board concurs with the [opponent] that the principle of the prohibition of reformatio in peius is not an absolute one, as demonstrated by G 1/99 [headnote]. A remittal of the case should normally be ordered if the first instance proceedings are tainted with a fundamental deficiency (Article 11 RPBA). A substantial procedural violation may certainly be regarded as a fundamental deficiency justifying a remittal. However, the fact that only the proprietor filed an appeal, changes the picture. This means that the decision under appeal is scrutinized only to the extent that it did NOT allow the maintentance of the patent as requested by the proprietor. Thus it is an open question if a substantial procedural violation by itself is sufficient reason for ordering a remittal against a proprietor who is a sole appellant especially in light of the fact that the opponent invoking the substantial procedural violation was not prevented from recognising this violation and filing an appeal himself. But even that question needs not be answered by the Board in the present case, as the Board sees no prima facie case of a substantial procedural violation.
The Board then examines the minutes and the statements of the parties and comes to the conclusion:
[2.3.4] [… T]here is no conclusive evidence before the Board that the OPs before the opposition were tainted with a substantial procedural violation. The Board also sees no reason to examine the issue any further on its own, because such a further examination of this question would go beyond the scope of these appeal proceedings.
[2.3.5] The [opponent’s] second main argument for a remittal is a contradiction between the order of the decision under appeal and the reasons of the decision, following the principles laid down in decision T 1178/04. In that case the deciding Board held that under certain circumstances the principle of ex officio examination takes precedence over the principle of the prohibition of reformatio in peius. For example, certain absolute or indispensable procedural pre-conditions (“Absolute, unverzichtbare Verfahrensvoraussetzungen”) are always to be examined ex officio.
The deciding Board of case T 1178/04 takes this statement of principle from the commentary “Patentgesetz mit Europäischem Patentübereinkommen”, 7th edition (2005), by Dr Rainer Schulte and others, paragraph 7.6.1, note 72, at page 986 which concerns the appeal procedure under German law. This very same citation also lists specific examples which fall under those absolute or indispensable procedural preconditions which need to be examined ex officio, among them the existence of a contradiction between the order and the reasons of the decision under appeal (loc. cit. paragraph 8.2.(g), note 77, at page 987. (“Widerspruch zwischen Tenor und Gründen der angefochtene Entscheidung”).
[2.3.6] However, in the light of the finding that a procedural violation during the first instance proceedings is not conclusively proven, the Board holds that the second argument of the [opponent] concerning the insufficient reasoning of the decision under appeal has no merit either. Having established that the opposition grounds under A 100(c) were withdrawn (except for the feature “wall”), there was no need for the OD to elaborate this question in more detail in its decision. The feature “wall” was duly examined in the decision […]. In this manner there is no recognisable contradiction between the order and the reasons of the decision under appeal.
[2.3.7] The reasoning why the OD did not pursue the issue of the “at regular intervals” feature on its own motion need not be particularly lengthy and detailed, given that it is within the discretionary power of the OD to maintain an opposition ground ex officio or not. It is noted that in the present case the opposition as a whole was not withdrawn, only an aspect of an opposition ground was withdrawn. Under such circumstances the OD could presume that the opponent wants to concentrate on those grounds and aspects which are more promising for the purpose of having the patent revoked. Certainly it can not be expected from an OD to oppose a patent even more vigilantly than the opponent himself would do, at least as long as the opponent himself does not withdraw the opposition and remains an active party in the proceedings. Under such circumstances any overly active involvement of the OD on the side of the opponent could easily be perceived as a bias in favour of the opponent. Accordingly, the Board holds that the decision under appeal is sufficiently reasoned and in itself free from contradictions. It is another matter whether the Board would have arrived at the same conclusions given the same facts.
[2.3.8] Thus in the absence of a proven procedural violation the Board sees no reason to remit the case to the department of first instance, and is not precluded from deciding on the matter before it.
The Board then examines the main request and the first auxiliary request and comes to the conclusion that both do not comply with A 123(2) because of the feature “at regular intervals” (!). It then deals with the second auxiliary request:
[5.1] The set of claims of this request is identical with the set of claims held allowable by the OD in its interlocutory decision.
[5.2] From a procedural point of view, such a request per se may be considered formally inadmissible, given that in respect of this request, the appellant is not adversely affected by the decision under appeal as required by A 107. However, this request is interpreted by the Board as in substance being a request for the dismissal of the appeal, in the sense that the Board should not issue a decision even more adverse to the appellant, such as a revocation of the patent as requested by the opponent in the present case.
Exception to the prohibition of “reformatio in peius”
[5.3] As stated above […], the Board holds that the [opponent] failed to prove that any substantial procedural violation occurred, and therefore the Board needs not to decide if such a violation would have justified an exception to the principle.
It remains to be decided if the “manifestly invalid” patent could be revoked, thus creating an exception to the principle, based on the fact that the Board has found that the “regular interval” feature contravenes A 123(2).
[5.4] It is noted that neither the decisions G 4/93 and G 9/92, nor the cited decision T 1178/04 appear to support such an interpretation. Whether or not this principle should be applied does not depend on the extent to which the claimed subject-matter is patentable or not.
It is clear from the reasons of G 4/93 and G 9/92 that when arriving at its answer, the Enlarged Board (EBA) considered the purely procedural aspects of the appeal proceedings, without considering the - undoubtedly undesirable - consequences of the maintenance of “invalid” patents. The Board sees no reason to deviate from the view expressed in G 4/93 and G 9/92 that it is the appeal of the sole appellant which determines the extent of the appeal proceedings.
In G 4/93  the EBA pointed out that the “initial request” of the appellant determines the extent of the proceedings. This is known as the principle of party disposition (“ne ultra petita”).
In G 4/93  which relates specifically to appeals where the patent proprietor is the sole appellant, the EBA considered that if the non-appealing opponent files a request for revocation of the patent, the scope of the appeal is exceeded, so that such a request cannot be examined.
Further as noted by the EBA in decision G 1/99 [4.1]:
“It is undisputed that decision G 4/93 decided that the principle of the prohibition of reformatio in peius should be applied in cases where the patent proprietor is the sole appellant against an interlocutory decision maintaining the patent in amended form. This is clearly the wording of paragraph 1 of the order. A patent proprietor can therefore not be placed in a worse position than if it had not appealed. This means that the patent as maintained by the OD in its interlocutory decision cannot be objected to by the Board of Appeal, either at the request of the respondent/opponent or ex officio. This is balanced by the option open to the opponent to file a request for the revocation of the maintained patent at the national level.”
This makes clear that the maintained patent cannot be objected to ex officio by the Board of Appeal.
Moreover, in G 4/93 , the EBA said that:
“The extent of the power of the Boards of Appeal to decide upon the proper scope of the patent should be considered in conjunction with the effect of withdrawal of the appeal”
and added that:
“Once the or each appeal has been withdrawn, there is no power to continue the proceedings”.
The present Board only adds that it is normally expected from parties to administrative and court proceedings that they cooperate with the other party and the deciding body in all stages of the proceedings, in order to arrive at a decision. Such cooperation is made difficult if a sole appellant must constantly be prepared to withdraw its appeal, in order to prevent a decision which would put him in a more unfavourable situation than his starting position.
[5.5] From this it follows that the applicability of the legal principle of the prohibition of reformatio in peius depends on the procedural status of a case, and the examination of this procedural status must precede any examination of the substantive merits of a request. This is also in line with the cited decision T 1178/04 [24-26], which restricts the necessity of ex officio examination to procedural preconditions.
However, there can be no doubt that the issue raised here, i.e. the invalidity concerns the very substance of a patent and has nothing to do with the procedural preconditions. In this manner there is simply no room to establish to what extent a request or a patent may or may not fulfil the usual substantive criteria, so from a legal point of view there is also no room to establish whether there is any invalidity. In other words, even if this fact should be manifestly apparent for all parties and the Board, the Board can not order any legal consequences thereof.
This can best be illustrated by the fact that a patent proprietor is not even required to present a request on appeal which would correspond to the version of the patent as upheld by the first instance. In that case it is perfectly clear that a Board is simply procedurally barred from examining, and even less deciding on that form of the patent. On the other hand, this does not hold for procedural preconditions and such facts, which are apparent from the decision under appeal, and which can be examined even without having to examine the actual substantive requests (i.e. the claim requests) in the appeal.
[5.6] As explained above, since there is no reason why the above mentioned decisions G 9/92, G 4/93 and G 1/99 should not apply to the present case, the patent as maintained by the OD in its interlocutory decision cannot be objected to by the Board of Appeal either at the request of the non-appealing opponent as a party to the proceedings as of right under A 107, second sentence, EPC 1973, or ex officio even if the patent as maintained would otherwise have to be revoked on the ground that a feature present in both claim 1 as granted and amended claim 1 as maintained introduces added subject-matter contrary to A 123(2).
Moral of the story: It is a dangerous thing to withdraw grounds of opposition without good reason. It may relieve the OD of some work, but you might regret your kindness later on. And: If ever a decision of the OD adversely affects you, you may want to seriously consider filing an appeal. Otherwise, the prohibition of reformatio in peius may make you regret not having spent the 1180 Euro appeal fee.
To read the whole decision, you may click here.