T 974/10 – Quite Exceptional

In the present case, only the opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form. This creates a situation where the prohibition of reformatio in peius applies: in principle, the patent proprietor cannot amend the claims on file in a way that would leave the opponent in a worse position than if he had not appealed. But there are exceptions to this principle, and the Board has an interesting obiter dictum on this topic:

[2.1] In a case where the opponent is the sole appellant against an interlocutory decision maintaining a patent in amended form, the patent proprietor is primarily restricted during the appeal proceedings to defending the patent in the form in which it was maintained by the OD in its interlocutory decision, see the decision of the Enlarged Board of Appeal (EBA) G 9/92 [point 2 of the order, first sentence]. The defence may include proposing amendments to the claims if they are appropriate and necessary.

The prohibition of reformatio in peius is the principle that, if defending the patent in the form in which it was maintained is not possible, the respondent (patent proprietor) should not be allowed to pursue claims which, if held allowable, would put the appellant in a worse situation than if it had not appealed.

In decision G 1/99 [order] the EBA allowed 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 OD in its interlocutory decision.”

The EBA laid down a strict order of possible amendments that a patent proprietor was allowed to file in order to overcome the deficiency.

The EBA also stated (see decision G 1/99 [12, last sentence]):

“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” (emphasis added).

In the present case the clarity objection […] was raised by the Board for the first time in appeal. The respondent must therefore be allowed to file amendments as foreseen in decision G 1/99 […], which decision gives due regard to the principle of equity (see also point [13] and point [14], last sentence, of the reasons).

However, the Board then found that the request under consideration, if held allowable, did not put the appellant in a worse situation than if it had not appealed. Therefore, the procedure laid down in G 1/99 was not relevant.

To read the whole decision, click here.

The file wrapper can be found here.