This decision contains interesting paragraphs both on reformatio in peius and disclaimers.
On March 11, 2003, the Opposition Division (OD) had maintained the patent in amended form.
The opponent filed an appeal.
In a first decision (T 724/03) the Board held that the disclaimer allowed by the OD did not contravene A 123. It also found document D23 to be highly relevant and introduced it into the proceedings before it remitted the case to the OD for further prosecution.
The patent proprietor filed several new requests.
On April 22, 2009, the OD (OD) again maintained the patent in amended form. It argued that the principle of prohibition of reformatio in peius was not violated by the patent proprietor’s requests filed in the continued opposition proceedings, because (i) this principle applied only to requests on which a decision was taken in appeal proceedings and (ii) the position of the appellant had in fact been improved by the admission of the highly relevant documents D19 and D23 into the proceedings. The remittal of the case to the OD with the order to consider the late filed documents D19 and D23 amounted to a new factual basis due to the high relevance of D19 in combination with D23 for the novelty of the claimed subject-matter. Under R 80 the proprietor was entitled to react to a new factual situation by making “appropriate and necessary amendments” occasioned by grounds of opposition. So the fact that the scope of protection sought was broader than under the claims maintained in the first interlocutory decision was immaterial to the present case, even though it did not fall under the exceptions from the prohibition of reformatio in peius as defined in G 1/99.
The opponent filed an appeal.
Here is the verdict of the Board:
Admissibility of the amendments in view of decisions G 9/92, G 4/93 and G 1/99 -
principle of and exceptions from the prohibition of reformatio in peius
principle of and exceptions from the prohibition of reformatio in peius
[2.1] It is evident and undisputed that the deletion of feature (f) in the claims according to the main request as held allowable by the second decision of the OD – the one now under review – resulted in a broadening of the protection sought by the proprietor as compared to its main request held allowable by the first decision of the OD against which only the opponent had lodged an appeal (T 724/03).
[2.2] The OD and the parties have expressed themselves extensively and in disagreement on the question of whether or not the proprietor’s requests directed to the broader claims are admissible in view of the principle of the prohibition of reformatio in peius (henceforth also “PRP”) as established in the (identical) decisions G 9/92 and G 4/93 (for simplicity only the second one will be quoted hereafter), namely that
“If 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 it was maintained by the OD in its interlocutory decision.” (Headnote 2).
This dispute was clearly due to the fact that the circumstances in the case at hand differ in several respects from those specifically dealt with in G 4/93 and, as to exceptions from the principle, in G 1/99.
[2.3] In the present case the Board of Appeal in its decision T 724/03 limited itself to admitting documents D19 and D23 into the proceedings and to remitting the case to the OD for further prosecution (point 2 of the order). As the Board did not itself review the decision under appeal in the light of these newly admitted documents the PRP was not an issue during these first appeal proceedings.
[2.3.1] As pointed out in G 1/99 [9.2] the PRP was established in G 4/93 not as a principle of procedural law generally recognised in the Contracting States (A 125), but as a consequence of the principle of ne ultra petita, more specifically
“it is the appellant who in the notice of appeal determines the extent to which amendment or cancellation of the decision is requested” in the subsequent appeal proceedings (G 1/99 [6.4]). The fact that the proprietor could not (for lack of adverse effect) or did not appeal against a decision of the OD cannot be altered later (just like the scope of protection conferred by the patent as granted). The ensuing procedural limitation on the proprietor’s liberty to change by way of amendments the scope of protection sought prevails until the final settlement of the opposition case (just like the limitation pursuant to A 123(3)) and, therefore, also in any proceedings, including further appeal proceedings, subsequent to a remittal under A 111. Otherwise the PRP would not serve its purpose, namely to avoid a situation whereby the opponent and sole appellant would be put “in a worse situation than if he had not appealed” (G 1/99 [headnote]),
or, in procedural terms, whereby the opponent would eventually be adversely affected by its own appeal (G 4/93 : “The aim of an appeal is to eliminate an ‘adverse effect’ (A 107, first sentence).”).
For this reason the OD was wrong to hold that the PRP applied only to requests on whose allowability a decision had been taken by the Board of Appeal […].
[2.3.2] The reasoning of G 4/93 also does not imply that, as the opponent argued […], the PRP prevails only on condition that the factual situation at the time of the first instance decision is the same as on appeal by the opponent. The legal basis for the PRP (ne ultra petita - see above) is not related in any way to the facts underlying the decision which the proprietor did not appeal against, or to the reasons for not doing so (see decision T 138/04 as to the deletion of a term introduced at the suggestion of the OD). Again, otherwise the PRP would not serve its purpose as explained above (which purpose does, however, not exclude the possibility that a change of the relevant facts may justify an exception from the principle - see below).
[2.3.3] It follows for the case at hand that the principle of the prohibition of reformatio in peius had to be taken into account in the continued opposition proceedings and, as both parties now seem to agree, it applies also in the present (second) appeal proceedings, the claims setting the framework for reformatio in peius being those according to the main request as held allowable by the OD in its (first) interlocutory decision announced on 11 March 2003.
[2.4] A further feature of the case at hand concerns the circumstances which may justify exceptions from the principle of the PRP in accordance with decision G 1/99.
[2.4.1] In the situation specifically dealt with in G 1/99 [headnote, 13-14] the decision under appeal had to be set aside and the patent had to be revoked by the board of appeal as “a direct consequence of an inadmissible amendment held allowable by the OD in its interlocutory decision”, the critical amendment consisting in the addition of a particular limiting feature during the opposition procedure, which did not, however, comply with (e.g. A 123(2) of) the EPC. The Enlarged Board (EBA) held that “it would be inequitable for the patent proprietor not to be given a fair opportunity to mitigate the consequences of errors of judgment made by the OD. Therefore, the patent proprietor may be allowed to file requests in order to overcome this deficiency” (point  of the reasons), if necessary even by deletion of the inadmissible amendment/the critical feature (point  of the reasons, last alternative).
[2.4.2] In contrast thereto, no error of judgement by the OD was established by the Board of appeal in T 724/03, which set aside the decision under appeal because the factual basis of the opposition had changed by the admission of D19 into the proceedings, a document which the board found to represent highly relevant state of the art in view of D23, a corroborating document first filed by the opponent during the (first) appeal proceedings.
[2.4.3] As to the possibility of exceptions from the PRP as such, the EBA considered in G 1/99 [11-12] that the undifferentiated application of the PRP
“could lead, in certain specific circumstances, to inequitable consequences. Indeed, objections raised in first instance may be supported by new facts and new objections may be raised in appeal proceedings with the consequence that the basis on which limitations have been made may still change and it would not be equitable to allow the opponent/appellant or the Board to present new attacks and to deprive the proprietor/respondent of a means of defence.”
[2.4.4] By this the EBA made it clear that exceptions from the PRP are to be allowed as a matter of equity in order to protect the non-appealing proprietor against procedural discrimination in circumstances where the PRP would impair the legitimate defence of its patent. That means that exceptions from the PRP are not limited to the situation specifically dealt with in G 1/99, i.e. an error of judgment by the OD concerning an amendment introduced into the version of the patent as maintained by the decision under appeal. Rather, the equity approach as taken by the EBA covers, beyond an error of judgment by the OD, any change of the factual and/or legal basis on which limitations have been made by the proprietor prior to the appeal by the opponent as the sole appellant, provided the proprietor would be prevented by the PRP from adequately defending its patent against new facts and objections introduced into the proceedings at the appeal stage.
[2.4.5] Under the circumstances prevailing in the opposition proceedings before the OD took its first interlocutory decision on 11 March 2003, it was a perfectly appropriate and legitimate line of defence for the proprietor to file a main request with claims containing the priority-destroying feature (f) in order to cope – successfully, as the OD held – with D15, a document which was in the proceedings already, and to ignore D19. As long as this late filed document, even if it represented state of the art within the meaning of A 54(2) for claims which did not enjoy the (earliest) priority, was not admitted into the proceedings, it could not have any bearing on the decision on the opposition against the patent in dispute. By the same token, in the event that D19 were to be admitted into the proceeding, the proprietor would be entitled to file an auxiliary request from whose claims feature (f) had been deleted so that D19 – a highly relevant document, as it turned out later, when taking into account the corroborating document D23 filed by the opponent in the (first) appeal proceedings – could not be cited against such a version of the patent in dispute. The filing of an auxiliary request with claims necessarily broader in scope than those according to the main request did not, in the given circumstances, constitute an abuse of the proceedings by the proprietor, in particular not a circumvention of the PRP. It is immaterial in this context that D19 was filed only shortly before the (first) oral proceedings before the OD, a fact relied on by the proprietor […] and as to whether the latter was better placed to judge the relevance of D19, since it was the proprietor’s own document, as maintained by the opponent […].
[2.4.6] Where the filing of broader claims as an auxiliary request would have been a legitimate means of defence in proceedings before the OD as department of first instance, it would be inequitable to deprive the proprietor of that means of defence by applying the PRP if in later appeal proceedings the conditions for filing the broader auxiliary/alternative request are eventually met – in the present case following the admission of the highly relevant D19 into the proceedings. Otherwise, the proprietor would be discriminated against and the opponent would benefit from the PRP beyond its purpose in the – certainly rare, but, as the present case demonstrates, not impossible – situation where a limitation of the claims is not the appropriate response to new facts and new objections (as in the present case “owing to the D19/D23 interaction in conjunction with the complex priority situation”, as the proprietor put it […]. It is also to be borne in mind that the principle of ne ultra petita as developed in G 4/93 and relied on in G 1/99 is exclusively a matter of the scope of protection sought or (implicitly) no longer sought by the proprietor. This cannot reasonably be the sole relevant criteria for assuming an implied waiver also of the priority right by the non-appealing proprietor where the filing of broader claims was both intended and appropriate to keep the (earliest) priority right in the case of the later admission of a specific intermediate document into the proceedings.
[2.4.7] It is true that in the case at hand the opponent’s situation was worsened by the deletion of the fatal feature (f), and that it was the proprietor’s choice to maintain claims containing the priority-destroying feature (f) as its main request. But arguing, as the opponent did […], that the proprietor is bound by its own decision at that time because it does not deserve protection from itself, is begging the question. The decisive question is whether or not the proprietor deserves protection, as a matter of equity, in view of a later change of the factual basis of the decision on the opposition (a change which in the present case was brought by the opponent by filing the corroborating document D23 in support of its appeal against the first interlocutory decision of the OD).
[2.4.8] On the other hand, it is not sufficient for granting an exception from the PRP that, as the proprietor argued […], it defended its patent in good faith at first instance and did not appeal in view of the factual and legal situation at the time of the decision of the OD, and it could not be expected to foretell the filing of D23 and the subsequent shift in the substance of the opposition. All this was not different from the standard situation where the sole or main request was found to be allowable and the patent can later be defended in appeal proceedings by the standard means of defence, that is by narrowing the protection sought in response to new facts or objections.
[2.4.9] The present case is not of that standard type, rather the relevant circumstances were such that the deletion of the critical priority-destroying feature (f) was exceptionally justifiable while also respecting the rule that such an exception should only be construed narrowly (G 1/99 ). There is nothing in that point or elsewhere in G 1/99 from which it can be derived that the three types of amendments and their order set out therein (point  and headnote, second paragraph) have to be considered as the sole equitable and, therefore, admissible amendments, also where no error of judgement by the OD was present. Whether at all, to what extent and in what form any such exception may be granted has to be decided along these lines in each individual case with an aim to re-conciliate the adequate protection of the rights and interests of the sole appellant/opponent with the legitimate defence of the patent by the (non-appealing) proprietor. The proprietor thus correctly argued that the decision G 1/99 provides guidance for the exercise of the relevant discretionary power beyond the facts underlying the referring decision […].
Added matter by disclaimer - main request
 Claim 1 of the main request […] excludes a film of comparative example 4 of EP-A 0 546 184 (D15) via a disclaimer in order to restore novelty over the disclosure in this document.
[3.1] The board notes that these claims are entitled to the earliest priority date of 12 August 1992. D15 claims three priorities from 1991 and was published on 15 October 1992, i.e. after the above earliest priority date. It therefore constitutes prior art according to A 54(3). This was not contested by the parties.
The requirement set out in G 1/03 [order 2.1] that a disclaimer may be allowable in order to restore novelty by delimiting a claim against state of the art under A 54(3) is therefore fulfilled.
[3.2] The opponent argues that the disclaimer contravened A 123(2) because the wording of the disclaimer that the claimed film “is other than a film of Comparative Example 4 of EP-A 0546184” did not represent a technical feature.
The board does not accept this argument. Although it is true that technical information cannot directly be extracted from the wording of the disclaimer in claim 1 as such, it should be noted that the disclaimer does not merely cite a published patent document, but clearly refers to a specific disclosure in D15, namely a single film described in comparative example 4. Table 4 of D15, characterises this film unambiguously by a number of technical features. The skilled person is therefore able to determine simply by reading the comparative example in D15 which technical embodiment should be excluded from the scope of the claim. The disclaimer in claim 1 therefore represents a negative technical feature in the sense of G 1/03  and therefore complies with A 123(2).
Finally the patent was revoked because the requests on file were found to lack inventive step.
I guess people having to use disclaimers will find this way of disclaiming attractive because it can avoid much trouble (no need to describe exactly what is disclosed in the example, no translation problems ...). Before jumping on this bandwagon it might, however, be wise to wait for decisions that confirm this approach.
Concerning the exceptions from PRP, there is also T 1009/05 , where Board 3.5.04 had a somewhat relaxed approach (reported on this blog).
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