3.1. Effet obligatoire des requêtes – Pas de reformatio in peius

Catchword:

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).

Catchword: 

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).

Catchword: 

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).

Résumé

In T 957/22 after having withdrawn its own appeal, the proprietor in its respondent's role was therefore limited to defending the patent in the form held allowable by the opposition division, or in a more restricted form.

The numbering of auxiliary requests 2-13 (lower ranking compared to the request to dismiss the opponent's appeal, i.e. to maintain the patent based on auxiliary request 1) suggested that they were part of the proprietor's defence against the opponent's appeal. However, claim 1 of each of these requests was not based on the restricted wording of auxiliary request 1 (which included "consisting of") held allowable by the opposition division, but on a broader wording of the main request (with "containing"), that the division had rejected.

While the formulation "consists of" was not clear in the context of claim 1 of auxiliary request 1, the board noted that substituting this term with "containing" nevertheless broadened the claimed subject-matter, compared to the first auxiliary request found allowable by the opposition division. While the term "consists of" limited the subject-matter of claim 1 of auxiliary request 1 to the components defined in the claim by excluding the presence of any further components, the substitution of this term with "containing" factually deleted this limiting feature, so that granting any one of these requests would put the opponent/appellant in a worse situation than if it had not appealed. This would not be in conformity with the prohibition of reformatio in peius.

In decision G 1/99 (OJ 2001, 382, Headnote), the Enlarged Board formulated an exception to the prohibition of reformatio in peius, namely "in order to meet an objection put forward by the opponent/appellant 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 opposition division in its interlocutory decision".

The board however agreed with the opponent that this exception did not apply in the case at hand, because the proprietor had deliberately withdrawn its appeal, and thus waived the possibility of defending its patent in a broader version than that upheld by the opposition division, although it was aware that the board had endorsed in its preliminary opinion the objection under Art. 123(2) EPC against the first auxiliary request. In this situation, there was no justification to grant the proprietor back this possibility for reasons of equity, i.e. to establish an exception from the prohibition of reformatio in peius. A party who waives an existing right in full knowledge of the legal situation could not expect to be granted back this right for reasons of equity.

Moreover, even if the principles as set out in decision G 1/99 were to be applied to the case at hand, i.e. if the proprietor could benefit from an exception to the principle of reformatio in peius, according to the decision of the Enlarged Board such an exception can only be made if the objection cannot be overcome by two other forms of amendments set out in the Headnote of decision G 1/99. However, the proprietor had not argued, nor was it discernible for the board, that claim amendments of these types were not possible.