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.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

T 1843/09 – More Exceptions

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

[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 [9]: “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 [14] of the reasons), if necessary even by deletion of the inadmissible amendment/the critical feature (point [15] 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 [15]). 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 [15] 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

[3] 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 [2] 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 [2], where Board 3.5.04 had a somewhat relaxed approach (reported on this blog).

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

T 1033/08 – Quite Exceptional

In this case the Board dealt with questions related to reformatio in peius.

Only the opponent had filed an appeal after the Opposition Division (OD) had maintained the patent in amended form.

Claim 1 of the main request before the Board read (the differences with respect to claim 1 as maintained are highlighted):

An ablating system for ablating body tissue, comprising:

multiple emitters (30, 201, 202, 203) of ablating energy;

two or more temperature sensing elements (80, 208, 209, 210) at each energy emitter for measuring temperature at the energy emitter;

a power controller (230) coupling a source of ablating energy to each energy emitter to convey ablating energy to the energy emitters;

a processing element (215) which is adapted to periodically read the temperatures measured by each of the temperature sensing elements forof each energy emitter and to select for eachat least one said energy emitter the hottest one of the measured temperatures, and to compare the hottest one of the temperatures for the or each said energy emitter to a desired temperature, and which is adapted to generate a signal individually for each energy emitter based upon the comparison wherein the desired temperature is established for all emitters; and

a temperature controller (215) coupled to the power controller; the temperature controller which is adapted to individually control the conveyance of energy to each energy emitter based upon the signal for that energy emitter to maintain the hottest temperature at all energy emitters essentially at the desired temperature during tissue ablation.

The opponent argued that this amendment broadened the scope of the claim, which was contrary to the principle prohibiting reformatio in peius.

The Board agreed:

[3] Claim 1 as upheld by the OD […] is restricted to the selection of the hottest one of the measured temperatures for each energy emitter of the ablation system for comparison to a desired temperature […]. By contrast, claim 1 of the main and the first auxiliary requests is of broader scope since the selection of the hottest one of the measured temperatures is carried out for at least one of the energy emitters. Consequently, the subject-matter of claim 1 of the main and first auxiliary requests, by covering the possibility of selecting the hottest one of the measured temperatures for any selection of the energy emitters, is broader than that of claim 1 upheld by the OD. This results in an improvement of the proprietor’s position putting the sole [opponent] in a worse situation than if he had not appealed, contrary to the principle of prohibition of reformatio in peius.

The opponent is the sole [opponent] against the interlocutory decision of the OD concerning maintenance of the patent in amended form according to the [patent proprietor’s] main request filed in opposition proceedings. The proprietor is not adversely affected and has implicitly indicated that he will not contest the maintenance of the patent in the version accepted by the OD (G 1/99 [9.1]). As ruled in G 9/92 and G 4/93 [headnote 2; 15-16], under these circumstances the patent proprietor is primarily restricted during the appeal proceedings to defending his patent in the form in which it was maintained by the OD. In particular, the patent proprietor is not permitted to improve his position to the detriment of the opponent and sole appellant. Amendments proposed by the patent proprietor as a party as of right under A 107, second sentence, may be rejected as inadmissible by a board of appeal if they are neither appropriate nor necessary.

Contrary to the [patent proprietor’s] view, G 1/99 does not supersede G 9/92 and G 4/93, but is complementary thereto in that it gives directions for allowing an exception to the principle of prohibition of reformatio in peius as defined in these decisions.

However, the exception to this principle developed in G 1/99 does not apply in the circumstances of the present case for the following reasons.

G 1/99 only deals with the deletion of a limiting feature added during the opposition procedure. The exception to the principle of prohibition of reformatio in peius applies to this situation only (see point [2.3] of the reasons).

In fact, in order to allow such a deletion which puts the opponent and sole appellant in a worse situation than if he had not appealed, the following conditions must be fulfilled:

A limiting feature introduced during the opposition procedure has to be deleted. The necessity for its deletion must be caused by the appeal. This means that the deletion is necessary and appropriate because it is related to a ground of opposition and caused by new facts, evidence or arguments put forward by the [opponent], or because of a different evaluation of the situation by the board of appeal. Without the deletion, the patent would have to be revoked. It is not possible to overcome the objection by introducing new features which limit the scope of the patent as maintained.

Only if these preconditions are fulfilled, an objection may be overcome by introducing new features which extend the scope of the patent as maintained, but within the limits of A 123(3) according to the second option of G 1/99.

The amendment requested with the main and first auxiliary request, viz. replacement of the word “each” by “at least one” in feature (D4) of claim 1, is not a deletion of a limiting feature but a substitution of this feature. It does not overcome an objection raised with the appeal and it is not caused by a different evaluation by the Board. The objections against the claim in the version maintained by the OD can be overcome by amendments which do not extend the scope of protection […]. The inadmissible amendment held allowable by the OD in its interlocutory decision relates to [another feature], and this deficiency does not have the consequence that the patent would have to be revoked. Accordingly, the present amendment does not fulfil the preconditions defined in G 1/99 for justifying the exception.

The [patent proprietor’s] argument that the filing of fresh prior art (documents E7 and E8) by the sole [opponent] at the appeal stage should permit the [patent proprietor] to retract amendments made by him before the OD is not accepted by the Board.

It is true that G 1/99 [12] states that the non-appealing proprietor deserves protection for reasons of equity when new facts have been introduced in appeal proceedings, and that the patent can exceptionally be amended in a way that offends the principle of prohibition of reformatio in peius. However, this is possible only if a limitation proves impossible (point [15] of the reasons).

In the present case, the [opponent’s] objection based on the above-mentioned new documents, which was raised against the version maintained by the OD, does not require any limiting amendment of the claims. To deal with new prior art documents, the [patent proprietor] either has to distinguish from it by argument or by making further restrictions to the claims upheld by the OD.

The [patent proprietor] may not in principle request another version of the patent during appeal proceedings, unless this version is a restriction of the maintained version (see G 1/99 [9.1]). [… T]he [patent proprietor’s] arguments regarding the new prior art have already convinced the Board, without the need for introduction of any further distinguishing amendments of the claims.

From the above it follows that the main and the first auxiliary requests are contrary to the principle of prohibition of reformatio in peius and do not fulfil the conditions for an exception.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

T 28/10 – Abuse? Of Discretion?

This is an appeal against the revocation of the opposed patent by the Opposition Division (OD).

The patent proprietor complained that the OD had not admitted its main request filed during the oral proceedings (OPs), which corresponded to the claims as granted. Contrary to the findings of the OD, the filing of this request had not been abusive as its aim was to avoid a reformatio in peius situation.

The Board found the appeal as such to be admissible and then went on to examine the admissibilty of the main request:

*** Translation of the German original ***

[2.1] According to Article 12(4) RPBA (OJ EPO 2007, 536), the Board may decide not to take into account submissions of a party which could have been presented or were not admitted in the first instance proceedings. Insofar as [a Board] has to decide on the admission, into the appeal proceedings, of submissions that had not been admitted in the first instance proceedings, under Article 12(4) RPBA, this boils down to a review of the discretionary decision of the OD based on R 116(2). If the way in which the first instance body of the EPO has exercised its discretion is contested in the appeal, then, according to G 7/93 [2.6], it is not the function of a BoA to review all the facts and circumstances of the case as if it were in the place of the first instance department, in order to decide whether or not it would have exercised such discretion in the same way as the first instance department. If a first instance department is required under the EPC to exercise its discretion in certain circumstances, such a department should have a certain degree of freedom when exercising that discretion, without interference from the Boards of Appeal. In such cases a BoA should only overrule the way in which a first instance department has exercised its discretion if it comes to the conclusion either that the first instance department in its decision has not exercised its discretion in accordance with the right principles or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion. Although the object of decision G 7/93 was the interpretation of R 51(6) EPC 1973, its explanations regarding the review of discretionary decisions are of general importance and have to be taken into account when applying Article 12(4) RPBA. Accordingly, the Board has to limit itself to a review of the way in which the OD has exercised its discretion when it decided not to admit the late filed request and should set aside the first instance decision only if it found that the discretion had been exercised in a wrongful way. Otherwise, the Board would circumvent the discretion conferred to the OD by R 116.

[2.2] The main request corresponds to the claims of the patent as granted. This request had not been defended in the written proceedings before the OD. Rather, it was filed only on the day of the OPs before the OD, where the (limited) set of claims of November 2, 2007, which had been in the proceedings until then […] had been replaced by the new main request and two more auxiliary requests. Thereby, the OD correctly applied R 116(2) by treating these requests as late-filed.

[2.3] The admission under R 116(2) of the main request filed on September 24, 2009, was discussed during the OPs […]. Therefore, the [patent proprietor] had the opportunity to make submissions regarding the reasons for the late filing. After having discussed with the parties, the OD exercised its discretion by not admitting this main request into the proceedings because it considered its late filing to be an abuse of procedure […]. In its reasons for its  decision the OD explained that the main request was not novel – as the patent proprietor had admitted – and, therefore, not suitable for overcoming a ground of opposition. Thus the filing of the main request amounted to an abuse of procedure.

[2.4] The Board cannot see a wrongful exercise of discretion in the fact that the OD based its decision above all on [the finding] that the patent proprietor admittedly did not intend to defend the late filed main request and acknowledged that this request did not comply with the requirements of A 54. The OD could indeed - without any arbitrariness - understand these statements of the [patent proprietor] to mean that even the [patent proprietor] did not consider the main request to be based on an acceptable (vertretbar) substantive legal position. The filing of such a request that openly (erklärtermaßen) does not pursue any justified legal claims has to be considered a violation of the duty to act in good faith (Gebot des Handelns nach Treu und Glauben) which obliges the parties to act in a candid (redlich) way (for the application of this principle to the actions of the parties, see G 2/97 [4.2]; R 4/09 [2.3.2]). 

The prodedural (verfahrensrechtlich) interest that has been invoked by the [patent proprietor] will be dealt with below […].

As a consequence, the OD has not exercised its discretion in accordance with wrong principles or in an unreasonable way by not admitting the main request of September 24, 2009, because of an abuse of procedure, nor did it act in an arbitrary manner insofar as it considered the violation of this procedural principle to be of decisive importance when exercising its discretion.

[2.5] The [patent proprietor] also objected that the purpose of the filing of the main request was to avoid a [situation of] reformatio in peius, which meant that there was no abuse of procedure. This argument cannot succeed.

[2.5.1] The principle of prohibition of reformatio in peius (Verschlechterungsverbot) concerns appeals (Rechtsmittelverfahren) and can be derived from the principle of party disposition (Verfügungsgrundsatz). The latter asserts that the appellant’s requests determine to which extent the judge can and may modify the impugned decision. Therefore, the requests forming the appeal (Rechtsmittelanträge) constitute the scope of the litigation beyond which the judge must not go. As a consequence, if there is only one appellant, the judge must not modify the impugned decision in a way that would disadvantage the appellant. This is referred to as the prohibition of reformatio in peius. In cases G 9/92 and G 4/93, the EBA decided that the prohibition of reformatio in peius can be applied in proceedings before the BoA. Whether it applies depends on the entitlement to file an appeal and on the filing of an appeal by the parties to the proceedings that are entitled to do so. All in all, it is only relevant in the case of an interlocutory decision maintaining the patent in amended form that is contested by only one of the adverse parties.

In the present case, however, the [patent proprietor] intended to defend the patent as granted. This is equivalent to the request that the oppositions be rejected. If this [request] had been granted, only the opponents would have been entitled to file an appeal. Therefore, the prohibition of reformatio in peius would not have applied in favour of the [patent proprietor]. Even if the patent had been revoked in view of the claims as granted, the prohibition of reformatio in peius would not have been relevant, because the outcome of the appeal proceedings could not have put the [patent proprietor] in a situation that is worse than the revocation by the OD. Therefore, it is not clear to which extent the prohibition of reformatio in peius could justify the filing of the main request corresponding to the claims as granted during the OPs before the OD. Therefore, the OD cannot be criticised for having exercised its discretion in a wrongful way by not taking into account the reference to the prohibition of reformatio in peius in favour of the [patent proprietor].

[2.5.2] As can be seen from the statement of grounds of appeal […] the [patent proprietor’s] reference to the prohibition of reformatio in peius indeed aimed at justifying its desire to maintain, by means of the main request, the possibility of filing an appeal and to make sure that it could amend – within the limits of A 123 – its requests in the appeal proceedings without being bound by the single set of claims filed before the OPs in the opposition proceedings.

Neither the prohibition of reformatio in peius nor the principle of party disposition that underlies it allow to derive the right that amended sets of claims filed by the applicant or the patent proprietor have to be taken into account at any stage of the proceedings (referring to A 113(2), which is related to the principle of party disposition, R 11/11 [10]). Rather, pursuant to R 116(2), this is within the discretion of the deciding body of first instance. As a consequence, it is not at the applicant’s or patent proprietor’s discretion to modify the object of the proceedings by filing amended sets of claims even at a late stage of the proceedings in order to change the course of the proceedings. All in all, the OD, when exercising its discretion, has neither violated a legal right of the [patent proprietor] nor left aside a relevant legal aspect.

[2.6] The remaining arguments submitted by the [patent proprietor] during the appeal proceedings do not establish a wrongful exercise of discretion by the OD either.

[2.6.1] First of all, the [patent proprietor] points out that the filing of the main request of September 24, 2009, was triggered by the submission of the [opponent] of August 21, 2009, wherein it first raised an objection of lack of novelty against claim 3 of the patent as granted, based on document D25. However, it has to be noted that the [opponent] had already attacked claims 1, 2 and 7 for lack of novelty (A 54) over document D25. The notices of opposition of the [opponents] comprised a series of further novelty objections. In view of that background, the BoA cannot see how the [patent proprietor’s] return to the set of claims as granted, which had not been defended until the OPs, can seriously be considered to be an appropriate reaction to a change of the course of the proceedings. As a matter of fact, the main request of September 24, 2009, did not overcome the objection of lack of novelty against claim 3, nor did it ensure a convergent conduct of the opposition proceedings. It rather meant a return to the point of departure of the proceedings.

[2.6.2] The [patent proprietor] also explained that the filing of the main request did not delay the proceedings and could not surprise because it was part of the patent as granted and, consequently, of the opposition filed by the respondents.

It may be true that, in view of the acknowledgement of lack of novelty, the required examination of the main request would not have taken a long time, but this aspect is not of decisive importance to the effect that it would justify challenging the balance of interests made by the OD based on the circumstances of the case and have an effect in favour of the [patent proprietor] on the decision on the admission of the main request.

The restraint required by decision G 7/93 [2.6] of the EBA when discretionary decisions are to be reviewed means that the Board may only intervene in the weighing of the circumstances to be carried out by the OD if the latter exercises its discretion in a wrongful way. In this context, the OD may rightfully give one aspect decisive importance over other aspects. In the impugned decision, the OD considered that there had been an abuse of procedure. Such abuses are not limited to behaviour that makes the postponement of the OPs necessary (cf. T 1067/08 [5.3]). As a consequence, the OD has not exercised its discretion in a wrongful way.

Apart from that, the second argument of the [patent proprietor] according to which the return to the claims as granted could not surprise is not correct. The Board agrees with the [opponents] that based on the behaviour of the [patent proprietor] until the OPs, the filing of a main request corresponding to the claims as granted was not to be expected. The [opponents] have referred to the following passage of the response to the notices of appeal dated November 2, 2007:

“[The patent proprietor] requires [the OD] to maintain the patent on the basis of claims 1 to 9 according to the enclosure and, for the rest (im Übrigen), to dismiss the oppositions.”

Together with the set of amended claims filed as enclosure to this submission, the [opponents] could legitimately understand in good faith that the [patent proprietor] did not have the intention to defend the claims as granted. This is all the more true as the [patent proprietor] did not come back to the patent as granted during the written proceedings. It is true that the filing of a request corresponding to the patent as granted did not concern an hitherto unknown object, but it still was surprising because the submission conflicted with the previous actions of the [patent proprietor] (venire contra factum proprium). Even in this respect [the Board] cannot find any wrongful exercise of discretion on behalf of the OD.

[2.7] As the Board has come to the conclusion that the first instance had exercised its discretion in accordance with the right principles and in a reasonable way, and had not exceeded the proper limits of its discretion conferred by A 116(2), the Board has not granted the request to admit the main request of September 24, 2009, into the proceedings (Article 12(4) RPBA, G 7/93 [2.6]).

NB: This decision has much more to offer, because the Board also dealt with the admissibility of several new auxiliary requests. In order to keep my posts reasonably short, I shall present these aspects in a forthcoming post.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.

T 1082/08 – Be Prepared

This is an appeal of the patent proprietor against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form.

Claim 1 of the main request before the Board was identical to claim 1 as granted and read (in English translation):

A document of value (Wertdokument) having at least one authenticity feature in the form of a luminescent substance based on doped host lattices, characterized in that the host lattice is doped with at least one chromophore with the electron configuration (3d)².

The OD had found the subject-matter of this claim to be insufficiently disclosed for it to be carried out by a person skilled in the art (A 100(b)). The Board had something to say on this matter:

*** Translation of the German original ***

Substantiation of the ground of opposition

[2.1] The [patent proprietor] has submitted that the ground of opposition under A 100(b) EPC 1973 had been insufficiently substantiated and, consequently, was inadmissible.

The ground of opposition under A 100(b) EPC 1973 has  been introduced into the proceedings by the OD […]. Grounds of opposition or legal bases (Rechtsgrundlagen), respectively, which were subject of the impugned decision, as in the present case, are also subject of the appeal proceedings, cf. T 275/05 [1].

Therefore, it is not to be examined whether the OD was right to consider this ground of opposition to be sufficiently substantiated.

Allowability of the ground of opposition

[2.2] The  [opponent] has essentially cited one reason why it believed that the disclosure of the invention was insufficient: a good portion of the claimed luminescent substances were not stable or did not have the desired luminescence properties allowing to authenticate [documents].

According to A 100(b) EPC 1973 the European patent has to disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. According to the established case law of the Boards of appeal this [requirement] is only fulfilled if the invention that is defined in the independent claim can be carried out by the skilled person, using his general knowledge as well as the indications provided in the patent specification, over the whole claimed domain, without undue burden.

Here the term “invention” means the claimed invention. Therefore, it has to be examined what precisely is encompassed by the “whole claimed domain”.

Independent claim 1 of the main request concerns a document of value having at least one authenticity feature in the form of a luminescent substance based on host lattices doped with at least one chromophore with the electron configuration (3d)².

Therefore, the Board is of the opinion that the claim cannot be interpreted in such a manner that it comprises all imaginable (denkbar) dopings with the electron configuration (3d)² in combination with all imaginable host lattices. Rather, the dopant must be capable of being incorporated into the host lattice and the host lattice that has been doped accordingly must have luminescent properties and must be capable of being introduced into documents of value.

The [patent proprietor] has submitted that the corresponding skilled person was a person the professional activity of whom was to ensure the authenticity of documents of value, in particular using luminescent substances. As a consequence, this person had to have technical knowledge in the technical field of production of documents of value as well as in the technical field of luminescent substances. The Board agrees. The Board expects this skilled person to be capable of deciding which transition metal ions with the electron configuration (3d)² he can incorporate into which host lattices, in which concentration or grain size, respectively, in order to obtain luminescent substances that can be introduced into documents of value (e.g. by means of printing ink).

Therefore, the Board reaches the conclusion that the invention claimed in claim 1 of the main request is disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

The Board finally found claim 1 to lack inventive step.  

The opponent requested the Board to revoke the patent, which was obviously impossible in view of the prohibition of reformatio in peius. The corresponding paragraph of the decision is interesting because the opponent tried to overcome this prohibition by means of an original argument.

[6.1] The Enlarged Board of appeal has explained in its decisions G 9/92 and G 4/93 [14] that the opponent who has not filed an appeal cannot validly request the revocation of the patent after the expiration of the time limit for filing an appeal.

Therefore, the main request of the [opponent] has to be dismissed as inadmissible.

[6.2] Also, the submission of the [opponent] according to which the [patent proprietor] had filed its appeal on the last day before the expiration of the time limit for filing the appeal and that, as a consequence, it had not had the opportunity to respond by filing an appeal itself, does not alter this assessment. As a matter of fact “if one opposing party does not win a case outright, the other opposing parties must be prepared for it to file an appeal.” (see G 9/92 and G 4/93 [11]).

To read the whole decision (in German), click here.

The file wrapper can be found here.

T 1100/09 – For The Worse

This is an appeal of the opponent (alone) against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form.

Claim 1 as maintained by the OD read:

A piston assembly for heavy duty diesel engine applications comprising:

a one piece upper crown part (102, 202) and a one piece lower crown part (104, 204);

said upper crown part (102, 202) having a lower connecting portion formed with an inner annular rib (107, 207) and an outer annular rib (109, 209) spaced from said inner rib (107, 209),

said inner and outer ribs (107, 207, 109, 209) of said upper crown part (102, 202) extending axially to free ends thereof each presenting a single planar joining surface (108, 110, 208, 210) of said upper crown part ribs (107, 207, 109, 209);

said lower crown part (104, 204) having an upper connecting portion (117, 217) from which a pair of pin boss portions (121, 221) depend having a space (127, 227) between said pin boss portions (121, 221) to receive a connecting rod, said upper connecting portion (117, 217) having an inner annular rib (113, 213) and an outer annular rib (115, 215) spaced from said inner annular rib (113, 213) of said lower crown part (104, 204),

said inner and outer ribs (113, 213, 115, 215) of said lower crown part (104, 204) extending axially to free ends thereof each presenting a single planar joining surface (116, 118, 216, 218) of said lower crown part ribs (113, 213, 115, 215);

said lower crown part (104, 204) having an inner gallery floor (106d, 206d) arranged above said space (127, 227) of said pin boss portions (121, 221) and surrounded by said inner annular rib (113, 213) of said lower crown part (104, 204); and

said inner gallery floor (106d, 206d) including an opening (106e, 206e) establishing fluid communication between said inner gallery (120, 220) and said space (127, 227) between said pin boss portions (121, 221)

characterized in

that said inner and outer ribs (107, 207, 109, 209) of said upper crown part (102, 202) are joined to said inner and outer ribs (113, 213) of said lower crown part (104, 204), respectively, across their respective single planar joining surfaces (108, 110, 208, 210, 116, 118, 216, 218) by friction weld joints (106b, 106g, 206b, 206g) to define the inner oil gallery (120, 220) and the outer oil gallery (122, 222) within the joined crown parts (102, 202, 104, 204) separated by said inner ribs (107, 113, 207, 213) of said joined crown parts (102, 202, 104, 204),

that said inner rib (113, 213) of said lower crown part (104, 204) is formed with at least one fluid transfer port (123, 223) spaced axially from said joining surface thereof

and extending between said outer oil gallery (122, 222) and said inner oil gallery (120, 220) to establish fluid communication therebetween,

that said fluid transfer port (123, 223) of said inner rib (113, 213) extends upwardly at an angle from said outer gallery (122, 222) to said inner gallery (120, 220),

that said outer gallery (122, 222) has a floor (124, 224) extending between said inner rib (113, 213) and said outer rib (115, 215) that is spaced axially from said planar joining surfaces (116, 118, 216, 218) of said inner and outer ribs (113, 213, 115, 215) of said lower crown part (104, 204), (and)

that said floor (124, 224) of said outer gallery (122, 222) is spaced below said floor (106d, 206d) of said inner gallery (120, 220). (my emphasis)

Claim 1 of the auxiliary request read (changes have been made apparent)

A piston assembly for heavy duty diesel engine applications comprising:

a one piece upper crown part (102, 202) and a one piece lower crown part (104, 204);

said upper crown part (102, 202) having a lower connecting portion formed with an inner annular rib (107, 207) and an outer annular rib (109, 209) spaced from said inner rib (107, 209),

said inner and outer ribs (107, 207, 109, 209) of said upper crown part (102, 202) extending axially to free ends thereof each presenting a single planar joining surface (108, 110, 208, 210) of said upper crown part ribs (107, 207, 109, 209);

said lower crown part (104, 204) having an upper connecting portion (117, 217) from which a pair of pin boss portions (121, 221) depend having a space (127, 227) between said pin boss portions (121, 221) to receive a connecting rod, said upper connecting portion (117, 217) having an inner annular rib (113, 213) and an outer annular rib (115, 215) spaced from said inner annular rib (113, 213) of said lower crown part (104, 204),

said inner and outer ribs (113, 213, 115, 215) of said lower crown part (104, 204) extending axially to free ends thereof each presenting a single planar joining surface (116, 118, 216, 218) of said lower crown part ribs (113, 213, 115, 215);

said lower crown part (104, 204) having an inner gallery floor (106d, 206d) arranged above said space (127, 227) of said pin boss portions (121, 221) and surrounded by said inner annular rib (113, 213) of said lower crown part (104, 204); and

said inner gallery floor (106d, 206d) including an opening (106e, 206e) establishing fluid communication between said inner gallery (120, 220) and said space (127, 227) between said pin boss portions (121, 221)

characterized in

that said inner and outer ribs (107, 207, 109, 209) of said upper crown part (102, 202) are joined to said inner and outer ribs (113, 213) of said lower crown part (104, 204), respectively, across their respective single planar joining surfaces (108, 110, 208, 210, 116, 118, 216, 218) by friction weld joints (106b, 106g, 206b, 206g) to define the inner oil gallery (120, 220) and the outer oil gallery (122, 222) within the joined crown parts (102, 202, 104, 204) separated by said inner ribs (107, 113, 207, 213) of said joined crown parts (102, 202, 104, 204),

that said inner rib (113, 213) of said lower crown part (104, 204) is formed with at least one fluid transfer port (123, 223) spaced axially from said joining surface thereof

and extending between said outer oil gallery (122, 222) and said inner oil gallery (120, 220) to establish fluid communication therebetween,

that said fluid transfer port (123, 223) of said inner rib (113, 213) extends upwardly at an angle from said outer gallery (122, 222) to said inner gallery (120, 220),

that said fluid transfer port (123, 223) extends from a location above said floor (124, 224) of said outer gallery (122, 222) to said floor (106d, 206d) of said inner gallery (120, 220) at said upward angle,

that said outer gallery (122, 222) has a floor (124, 224) extending between said inner rib (113, 213) and said outer rib (115, 215) that is spaced axially from said planar joining surfaces (116, 118, 216, 218) of said inner and outer ribs (113, 213, 115, 215) of said lower crown part (104, 204), (and)

that said floor (124, 224) of said outer gallery (122, 222) is spaced below said floor (106d, 206d) of said inner gallery (120, 220), and

that said inner ribs (107, 113, 207, 213) of said upper and lower crown parts (102, 202, 104, 204) extend substantially parallel to a central longitudinal axis A of said upper and said lower crown parts (102, 202, 104, 204) adjacent said joining surfaces (116, 118, 216, 218, 108, 110, 208, 210).

This case offers us the opportunity to study one of those cases where the Boards accepts reformatio in peius.

Main request (A 84 EPC 1973)

[2.1] The [patent proprietor] was of the opinion that the insertion of “single” into claim 1 made during the opposition proceedings was only a clarification which did not restrict the claimed subject-matter. The Board however finds that the amendment is a restriction; it excludes for example multi-planar surfaces. The amendment is thus not simply a clarification of what the granted claim already states as argued by the [patent proprietor]. As the amendment is also not simply a result of combining granted claims, the requirements of A 84 EPC 1973 need to be fulfilled by the amendment.

[2.2] The features in the pre-characterizing portion of claim 1 define two crown parts of a piston assembly to be joined by friction welding (i.e. to achieve the welded state defined in the characterizing portion). However, the claim is directed to a “piston assembly” (i.e. an assembly formed by assembling these crown parts) in which the friction welded joining surfaces are no longer identifiable because the surfaces have melted and are welded to one another. Consequently the features of the pre-characterizing portion in question are no longer present in the subject-matter having the further features of the characterizing portion. This leads to a lack of clarity in the meaning of A 84 EPC 1973 since it is not determinable in which configuration the respective joining surfaces are related to one another in the piston assembly according to claim 1. Specifically in the present case, it is no longer possible to identify whether a single surface was used on each rib before welding. Although the [patent proprietor] argued that a single surface on each rib could still be identified in the welded assembly, as allegedly demonstrated by Annex A, the Board is unconvinced by this argument, since the joining surfaces where friction welding occurred in Annex A are highly deformed (as shown for example at the outer portions thereof) such that identification of a single surface on each of the contact areas which were ultimately joined cannot be made.

[2.3] For this reason the main request cannot be allowed.

Auxiliary request (exception to the prohibition of reformatio in peius)

[3.1] In its decision G 1/99 the Enlarged Board of Appeal held that in principle, an amended claim, which would put the opponent and sole [opponent] in a worse situation than if it had not appealed, must be rejected. However, an exception to this principle may be made in order to meet an objection put forward by the opponent/[opponent] 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.

In such circumstances, in order to overcome the deficiency, the patent proprietor/[patent proprietor] may be allowed to file requests, as follows:

• in the first place, for an amendment introducing one or more originally disclosed features which limit the scope of the patent as maintained;
• if such a limitation is not possible, for an amendment introducing one or more originally disclosed features which extend the scope of the patent as maintained, but within the limits of A 123(3);
• finally, if such amendments are not possible, for deletion of the inadmissible amendment, but within the limits of A 123(3).

[3.2] In the present case neither the Board nor the parties to the proceedings saw a possibility of applying one of the first or second alternative solutions established by the Enlarged Board. The newly introduced term “single” cannot be restricted by another expression since it has already the narrowest specific meaning in defining the surfaces. There is no other expression in the patent which would be suitable to restrict “single” in another way because it is already the highest degree of definition compared to the possibilities of “a” or “one”. Therefore, according to established case law, the [patent proprietor] may be allowed to delete the inadmissible amendment made during the opposition proceedings. Since the deletion also does not extend the scope of protection conferred by claim 1 as granted (as this defined merely “a planar joining surface”), deletion of the term “single” does not contravene A 123(3).

Finally the case was remitted to the first instance for further prosecution.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.