Résumé de EPC2000 Art 110 pour la décision T2503/18 du 15.09.2022

In T 2503/18 both the patent proprietors and the opponent had appealed the opposition division's decision to maintain the patent in amended form. After all the patent proprietors' requests had been discussed at the oral proceedings and the board had considered them not to be allowable, the patent proprietors had withdrawn their appeal before the board's decision was announced. Consequently, the opponent had become the sole appellant and the patent proprietors had become the respondents and party to the appeal proceedings as of right under Art. 107, second sentence, EPC. In claim 1 of the patent as granted (main request) as well as in claim 1 of auxiliary requests 1 and 2ter, limiting feature 1.8 was absent compared to claim 1 of auxiliary request 4, which had been considered by the opposition division to meet all requirements of the EPC. Therefore, the subject-matter of claim 1 of these requests was either broader or an aliud compared to the subject-matter of claim 1 of auxiliary request 4 but not a restriction of the claimed subject-matter of auxiliary request 4. This meant that maintaining the patent as granted or maintaining the patent as amended according to auxiliary requests 1 or 2ter would have put the sole appellant in a worse situation than if it had not filed an appeal. This would have contravened the principle of prohibition of reformatio in peius as the opponent had become the sole appellant (see decision G 9/92, OJ 1994, 875 and Case Law, V.A.3.1. and V.A.3.1.5). The main request as well as auxiliary requests 1 and 2ter were thus to be rejected as inadmissible (see decision G 9/92, cited above, point 2 of the order). This conclusion did not apply to auxiliary request 3ter, which, although higher in rank, contained in claim 1 all the features of claim 1 of auxiliary request 4. Accordingly, it was concluded that the claims of auxiliary request 3ter did not result in an extension in the scope of protection with respect to the claims of auxiliary request 4. Thus, to this extent at least, the amendments did not contravene the principle of prohibition of reformatio in peius. Under these circumstances, auxiliary request 3ter was within the board's jurisdiction, and the board was empowered to decide upon this request in substance.