3.1. Binding effect of requests – no reformatio in peius
The question of law referred to the Enlarged Board of Appeal in G 9/92 date: 1994-07-14 and G 4/93 (both OJ 1994, 875) asked whether and to what extent a board of appeal could depart from the request formulated in the notice of appeal when deciding opposition appeal proceedings, to the disadvantage of the appellant.
The Enlarged Board took several factors into account. The aim of the appeal was to eliminate an 'adverse effect'. As the filing of an appeal was subject to a time limit, it would not be consistent to allow non-appealing parties the unrestricted right to alter the extent of the proceedings by submitting their own requests without limitation of time. A non-appealing party as a respondent had the opportunity to make what it considered to be appropriate and necessary submissions in the appeal proceedings to defend the result obtained before the department of first instance.
The Enlarged Board thus concluded that:
1. If the patentee was sole appellant against an interlocutory decision maintaining his patent in amended form, neither the board of appeal nor the non-appealing opponent (as party to the proceedings as of right under Art. 107, second sentence, EPC 1973) could challenge maintenance of the patent as thus amended.
2. If the opponent was sole appellant against an interlocutory decision by an opposition division maintaining the patent in amended form, the patentee was primarily restricted in the appeal proceedings to defending the patent as thus maintained. Amendments proposed by the patentee (as party to the proceedings as of right under Art. 107 EPC 1973, second sentence) could be rejected by the board as inadmissible if they were neither appropriate nor necessary.
As legal uncertainty had been created by the fact that the case law of the boards of appeal had not been uniform as regards the principle of prohibition of reformatio in peius when applying or interpreting decision G 9/92 date: 1994-07-14 (OJ 1994, 875), a further question was referred to the Enlarged Board, which was answered in G 1/99 (OJ 2001, 381). See in this chapter V.A.3.1.7.
- T 727/19
1. The Guidelines, Part E, Chapter XI, set out the procedure whereby the reasons of a responsible superior's decision rejecting a challenge to the impartiality of a division can be appealed. This procedure does not make the responsible superior's decision formally appealable (Reasons 2.3 and 2.4).
2. The unexplained omission of the reasons of the responsible superior's decision from the final decision of the division justifies the suspicion of partiality and constitutes a substantial procedural violation (Reasons 2.9 and 2.15).
3. The principle of the prohibition of "reformatio in peius" is not applicable where a case is to be remitted to a division in a new composition because of a suspicion of partiality (Reasons 5.5 and 5.6).
- T 882/17
If the opponent is the sole appellant against an interlocutory decision maintaining a patent in amended form, an objection related to the inadmissibility of the opposition is subject to the principle of the prohibition of reformatio in peius. In such a procedural situation, the Board is prohibited from ordering the maintenance of the patent as granted due to the inadmissibility of the opposition (Reasons 3.19).
- T 803/17
The yardstick for determining whether the position of an appellant is, because of its own appeal, worsened in a way which is incompatible with the principle of the prohibition of reformatio in peius is the order of the decision under appeal, in particular the order's legal effect on the appellant. If an opposition is considered inadmissible in the appeal proceedings, an appellant whose opposition was rejected in the decision under appeal as unallowable would not be in a worse position than if it had not appealed, as in both cases the patent would be maintained as granted. The legal reasons leading to this result, including whether the opposition is rejected as inadmissible or unallowable, do not fall within the scope of the principle of the prohibition of reformatio in peius (Reasons 3.5).
- Annual report: case law 2022
- Summaries of decisions in the language of the proceedings