R 0004/09 30-04-2010

I. Oy Langh Ship AB was the proprietor of European patent No. 1222107 disclosing a method for loading or shipping heavy reels on board a ship.

II. This patent was revoked by decision T 982/07 of the Technical Board of Appeal 3.2.01 pronounced at the issue of oral proceedings held on 23 October 2008, and posted on 20 January 2009.

Said decision was corrected in application of Rule 89 EPC 1973 by a further decision dated 12 March 2009.

III. The appeals of the opponents constituting the subject-matter of the decision for which review is sought, were directed against the interlocutory decision of the opposition division dated 25 April 2007 according to which, account being taken of the amendments made by the patent proprietor (current petitioner) during the opposition proceedings, European patent No. 1222107 and the invention to which it relates were found to meet the requirements of the EPC 1973.

IV. The patent had a filing date of 22 December 2000 and claimed priorities from various former applications, the earliest and latest having the following filing dates:

PR1: 30 December 1999;

PR5: 11 December 2000.

Document D18: "Coil decks raise comfort level", MacGregor News, MacGregor Group AB, Issue 141 Autumn 2000, played a role in the appeal proceedings and was published after the first but before the last priority date.

V. Initially the patent proprietor requested that the appeals be dismissed. After having received a communication by the Board in which it indicated its provisional opinion that the claims as approved by the opposition division were unclear and included subject-matter extending beyond the original disclosure, the respondent filed amended sets of claims according to a main and three auxiliary requests.

VI. At oral proceedings held on 23 October 2008 both appellants requested the revocation of the patent. The patent proprietor (respondent) requested that the patent be maintained in amended form on the basis of the claims according to the main request or subsidiarily according to the first or second auxiliary requests respectively corresponding to the second and third auxiliary requests filed on 22 August 2008.

The debate was then closed and after deliberation the Board gave its decision to set aside the impugned decision and to revoke the patent.

VII. The reasons of this decision were posted to the parties on 20 January 2009.

Relying on Article 112a EPC the patent proprietor (hereinafter petitioner) filed on 27 February 2009 a petition for review by the Enlarged Board of Appeal requesting that:

(1) the petition be allowed on the grounds presented in the corresponding request, and that the decision of the Technical Board of Appeal 3.2.01 issued 23 October 2008 in case T 982/07 be set aside;

(2) pursuant to Rule 108(3) EPC reopening of the proceedings before the Technical Board of Appeal preferably in a new composition be ordered;

(3) pursuant to Rule 110 EPC reimbursement of the fee for petition of review be ordered.

No oral proceedings have been requested.

The petitioner, who is adversely affected by the decision of the Technical Board of Appeal, bases its petition for review on the following grounds:

(1) a fundamental violation of Article 113 EPC occurred in the course of the appeal proceedings when the Board based its decision on grounds on which the proprietor did not have an opportunity to comment (Article 112a(2)(c) EPC); and/or

(2) a fundamental procedural defect defined in the Implementing Regulations occurred in the appeal proceedings (Article 112a(2)(d) EPC).

VIII. Aware of the provisions of Rule 106 EPC in respect of the admissibility of petitions for review, the petitioner put forward that the Board had found that the decision by the Enlarged Board of Appeal in G 1/99 concerning prohibition of reformatio in peius was a hindrance for the amendment of claims to the detriment of the appellants. During the oral proceedings, the Board noted that decision G 1/99 prohibits reformatio in peius. This decision had not been presented earlier. The patentee studied the contents of G 1/99 after the end of the appeal proceedings, and noted that G 1/99 in fact provided an exception to the principle of prohibition. However, this incorrect citation of case law was later modified in the written decision, where the Board has changed its position and notes now that G 1/99 provides an exception to the prohibition of reformatio in peius. Notwithstanding, although it discussed the exception in the written decision, the Board did not apply it. This sequence of events effectively deprived the proprietor of a possibility to raise an objection in respect of a procedural defect during the appeal proceedings and to comment on the grounds on which the Board later, in the written decision, based its decision.

As a consequence the Board has revoked the patent directly after its deliberation and has further based its decision in writing on grounds that were not spelt out during the oral proceedings.

Hence these circumstances fulfil the requirements set out in R 1/08 namely that:

"the decision is based on reasoning relating to grounds which adversely affected the patent proprietor and which the patent proprietor had no opportunity to comment upon, and a causal link exists between the procedural defect and the final decision." (quote from R 1/08 by the petitioner on page 2, point 7 of the petition).

For these reasons the petition for review must be considered as admissible since the petitioner had no possibility, being ignorant of the final reasoning of the Board, to raise an objection in the course of the oral proceedings.

IX. During said oral proceedings the Board came to the conclusion that the main request was not entitled to the earliest claimed priority and that in respect of Document D18 becoming state of the art under Article 54(2) EPC 1973, the claimed invention was obvious.

Turning to the auxiliary requests the Board considered that they were indeed broader in scope than the claims maintained by the opposition division, and therefore would put, if allowed, both appellants (opponents) in a worse situation than if they had not appealed.

X. The Board of Appeal further stated that, following the reasoning in G 1/99, the patent proprietor was not entitled to rely on the exception this decision made to the principle of prohibition of reformatio in peius, since the revocation of the patent by the Board was not the direct consequence of an inadmissible amendment held allowable by the opposition division in its interlocutory decision.

Indeed for the Board this situation did not arise in the case under consideration because the amendment in question although not being entitled to priority did have a basis in the application as originally filed.

The amendment therefore was not inadmissible and did not have the direct consequence that the patent would have to be revoked.

XI. After notification of the decision in writing the patent proprietor first became aware of the reasoning underlying the rejection of the auxiliary requests. He now contends that in the course of the oral proceedings he was wrongfully informed of the real ambit of decision G 1/99 which actually provides for an exception to the principle of prohibition of reformatio in peius whereas on the contrary during oral proceedings said decision G 1/99 was alleged to establish said prohibition.

XII. The petitioner was therefore unable to raise a corresponding objection during the course of the oral proceedings. Furthermore a causal link exists between the alleged procedural defect and the final decision which affected the patent proprietor.

Therefore the petition for review filed on 27 February 2009 fulfilled the prerequisite set out in Rule 106 EPC and should be considered as formally admissible.

XIII. As regard the merits of its petition the petitioner brought forward the following:

(A) He was not entitled to appeal against the decision of the opposition division maintaining the patent in an amended form corresponding to its main request.

(B) While first requesting the rejection of the appeals of both opponents he duly defended its patent in the version accepted by the opposition division in the decision under appeal.

(C) Becoming aware through a communication of the Board dated 18 June 2008 of the objections this body had in respect of the disclosure, in the priority document PR1, of an expression of the claims maintained by the opposition division, the patentee respondent filed amended sets of claims on 22 August 2008 according to a main and three auxiliary requests.

(D) The Board found that the claims of the main request were not entitled to the first claimed priority and rejected them.

(E) Turning to the auxiliary request which it found broader in terms of scope of protection conferred the Board relying on the principle established in decision G 1/99 considered that their admission would infringe the principle of reformatio in peius.

(F) Precisely contrary to the erroneous assertions made by the Board during oral proceedings, said decision G 1/99 provides for an exception to the prohibition of reformatio in peius, in favour of a non-appealing patentee whose patent would otherwise have to be revoked.

(G) The information given to him by the Board was misleading and put him in a position where he had no available remedy. Further the Board failed to apply the teaching of G 1/99 in respect of the exceptions to the principle of prohibition of reformatio in peius.

(H) Furthermore the Board has violated the provision of Article 112a(2)(d) EPC, more precisely, those of Rule 104(b) EPC by dismissing the auxiliary requests with grounds that are in contradiction to the ratio of G 1/99.