Tuesday, 20 August 2013

T 1979/11 – Exceptionally Broad

In this case only the opponent appealed against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form. In what follows the Board discusses the admissibility of the main request and confirms one exception from the principle prohibiting reformatio in peius.

[2.1] Claim 1 of the main request as found allowable by the OD referred to a process for the preparation of methionine granules wherein the granules are characterised by a certain bulk density and a certain particle size distribution […]. Claim 1 of the present main request differs from this claim in that the particle size characteristic of the granules has been deleted […]. Claim 1 of the present main request is thus broader than claim 1 of the main request as allowed by the OD.

In the appellant’s view, due to this broadening, the present main request violates the principle of the prohibition of reformatio in peius. The appellant therefore requested that this request should not be admitted into the proceedings.

The board acknowledges that the broadening of a claim effected by a proprietor/respondent in appeal proceedings is generally contrary to the principle of the prohibition of reformatio in peius. However, in the present case, the broadening of claim 1 by the deletion of the particle size characteristic is a reaction of the respondent to the appellant’s objection under A 83. This objection had not been made during the opposition proceedings but has been raised for the first time in the statement of grounds of appeal […].

As outlined in G 1/99 [12-14], it would not be equitable to allow the appellant/opponent to present a new attack and at the same time to deprive the proprietor/respondent of a means of defence. Even though G 1/99 specifically addressed a reaction of the proprietor to an error of judgement by the OD concerning the allowability of an amendment, the equity approach as outlined by the Enlarged Board of Appeal is not limited to the situation specifically dealt with in G 1/99. On the contrary, it covers, in addition to an error of judgement by the OD, other situations involving a 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 (T 1843/09 [2.4.3-4]).

Hence, the present situation, in which the broadening of the claims results from a reaction of the respondent to an objection raised by the appellant for the first time in the appeal proceedings, justifies a deviation from the principle of the prohibition of reformatio in peius. This principle thus does not speak against the admittance of the main request into the proceedings.

[2.2] The only further argument made by the appellant as regards the admissibility of the main request was that no reasons for the filing of this request were given and hence the appellant was not able to properly react to this request. However, the respondent has merely deleted the particle size characteristic which had been objected to by the appellant and by the board in its preliminary opinion. It was thus self-evident that the reason why this amendment was made was to overcome the appellant’s and the board’s objections.

[2.3] The board therefore decided to admit the main request into the proceedings.

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Myshkin said...

Some aspects of the prohibition of reformation in peius and its exception puzzle me.

According to G 9/92 and G 4/93, one of the arguments in support of this prohibition is the fact that if the sole appellant withdraws the appeal, the appeal proceedings come to an end without a decision being taken (due to G 7/91 and G 8/91). It seems the EBA wanted to avoid the situation that it would be beneficial for an applicant to withdraw the appeal (G 9/92 and G 4/93, points 6 and 12 of the reasons).

I believe this argument makes sense, but it does not work anymore once exceptions to the prohibition of reformation in peius are allowed. The only reason for an opponent being the sole appellant in such a situation to not withdraw the appeal is that the Board leaves him sufficiently in the dark about whether the admitted set of broadened claims will be found allowable (because if not, the patent might still be revoked, as was the case here). I'm not convinced that leaving the sole appellant sufficiently in the dark as a strategy to not let him withdraw the appeal is how the all important principle of party disposition should work.

Of the course the EBA in G 1/99 was aware of the possibility of a withdrawal of the appeal (see point 6.6 of the reasons), but it did not really go into this issue. The EBA's main reason for allowing the exception seems to be that a non-appealing opponent who due to the prohibition does not manage to get the patent revoked can still try again at the national level, while a non-appealing patentee who due to the prohibition loses his patent has no remedy at the national level.

But does the non-appealing patentee really deserve a chance to save the patent by a broadening of the claims? Suppose a patent is maintained in amended form with a limiting feature that violates Art. 123(2) and it is not appealed at all. Now the patentee gets national patents with a fatal deficiency. It is clear from Art. 138 EPC2000 (and I think also from Art. 138 EPC1973, but I did not check its wording) that the patentee won't be able to remove the deficiency by broadening the claims at the national level.

Is a patentee better off with a fatally deficient patent (in the case no appeal was filed) than with no patent (in the case only the opponent appealed and no exceptions are allowed to the prohibition of reformation in peius)? Maybe he is, but in an ideal world (where the opponent could get the deficient patent invalidated in all national jurisdictions at no cost) there is no real difference.

I think the EBA must work on the assumption that if a TBA finds a particular set of claims invalid, then these claims really are invalid and would be found invalid by all national judges. If the EBA would not, then it would have a reason to forbid a TBA from ever revoking a patent for the reason that the patentee does not have a remedy at the national level, and this is nonsense.

So the situation is that if the opponent does not appeal a decision of the OD to maintain a patent with an added feature infringing Art. 123(2), we must assume that he is certain that he can get the patent invalidated in all designated states. If on the other hand the opponent does appeal, then the patentee might luck out by being allowed to broaden his claims, which the patentee would not have been allowed to do at the national level. I see very little justification for this reformatio in peius.

Anonymous said...

A simple solution to this problem would be to allow the patent proprietor to file an ancillary appeal after the time limit for filing an appeal as it is the practice in Germany. This would also avoid the problem that a partially losing party who is satified with the first instance result has to file an appeal in order avoid the reformatio in peius trap.

Anonymous said...

To me, a simple solution is one that does not require a diplomatic conference to change the EPC. A change of rules at the most.