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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