Thursday 10 February 2011

T 1544/07 – Between Consenting Adults


In this case one of the opponents (but not the patent proprietor) filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form. This would normally be a situation where the prohibition of reformatio in peius applies. But apparently it does not have to …

[2.1] The process according to claim 8 as maintained by the OD was characterized, inter alia, by the feature “adding from 10% to 90% by weight, based on the dialkylperoxydicarbonate, of compound of Structure I”.

Claim 1 of both the main request and the auxiliary request, which are based on claim 8 as maintained by the OD, merely specify the feature “adding from 10% to 90 % by weight of compound of Structure I” […].

The deletion of the reference point for the weight range of the compound of structure I of from 10% to 90%, namely “based on the dialkylperoxydicarbonate”, results in an unclarity of that feature, i.e. in the reference point to be used. The use of a reference point other than the weight of the dialkylperoxydicarbonate […] results in the claim now covering a process employing amounts of a compound of structure I not covered by claim 8 as maintained by the OD. The deletion of the reference point therefore results in an extension of the independent process claim vis-à-vis that as maintained by the OD.

[2.2] As a result, the deletion of the reference point for the weight range in claim 8 as maintained by the OD and the resulting extension of its scope means that the patent covers embodiments which were not covered by the patent as maintained by the OD, and, consequently, that the appellant is put in a worse position than if it had not appealed (reformatio in peius; see, e.g. T 724/99 [3.2-3]).

In principle, an amended claim, which would put the opponent and sole appellant in a worse situation than if it had not appealed, must be rejected (cfG 1/99). 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 in which it was maintained by the OD (cf. G 4/93 and G 9/92 [16]).

[2.3] The [patent proprietor] deleted the reference point from claim 8 as maintained by the OD in reaction to an objection raised by the [opponent]. The Board considers that said amendment arising from the appeal proceedings is necessary and appropriate and thus does not see any reason to question the admissibility of the amendment for procedural reasons.

[2.4] During OPs, the appellant was asked by the Board whether it objected to the deletion of the reference point as a possible reformatio in peius. In reply, the appellant indicated that it had no objections thereto even if it would thereby put itself in a worse position than if it had not appealed.

In this situation, the question arises whether the Board has to apply the prohibition of reformatio in peius of its own motion if the party affected deliberately refrains from making use of its right to invoke it. This question has not been addressed by the Enlarged Board of Appeal (EBA) in the pertinent decisions (cf. G 9/92 and G 1/99).

[2.5] The EPC does not contain any provisions which stipulate that a decision terminating appeal proceedings must not place an appellant in a worse position than it was in as a result of the contested decision (cf. G 9/92 [7]). If the opponent and sole appellant does not invoke the prohibition of reformatio in peius against a claim request submitted by the respondent/patentee which extends the scope beyond that of the claims as maintained by the first instance, the Board does not see any reason why it should apply the principle of the prohibition of reformatio in peius of its own motion.

Following the principle of party disposition governing the appeal proceedings, any right protecting the appellant against an outcome that puts it in a worse position than if it had not appealed, may be waived (volenti non fit iniuria).

[2.6] For any amendment after grant of a patent, the Boards examine ex officio whether the amendment complies with the requirement of A 123(3). If claims are extended in appeal proceedings vis-à-vis claims maintained in an interlocutory decision of the OD, the interests of third parties, i.e. the public, are not affected unless there is a violation of A 123(3). However, the Board has found that the amended claim was within the limits of A 123(3). Therefore, the Board does not see the interests of the public to be affected, which could justify questioning ex officio the allowability of the claims extending beyond those maintained by the OD.

[2.7] As the Appellant has not objected to the extension of the claims beyond the claims as maintained by the OD, the Board does not examine of its own motion whether the amendment constitutes a reformatio in peius (cf. T 714/98 [2.2]).

Claim 1 is thus admitted into the proceedings.

The patent was finally revoked for lack of inventive step.

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

To have a look at the file wrapper, click here.

This is another decision the knowledge of which I owe to fellow EC member Manolis.

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