EP 3 296 282 B1 relates to a method for producing hydrohalofluoroolefins
Brief outline of the case
The opponent appealed the OD’s decision to maintain the patent according to AR3.
The proprietor filed with the reply to the SGA, AR 3-3a+ 4- 4a+5-5a. AR3 was the highest ranked request. AR5b was received later.
In a communication under Art 15(1) RPBA, the board informed the parties that it was of the preliminary view that the methods in claim 1 of all the requests lacked an IS and that, in view of that, it did not consider necessary to elaborate on any other issue at that point.
During OP, the board announced its conclusion that the method in claim 1 of AR3- 3a+4-4a lacked an IS starting from D3.
Upon opening of the debate on AR5, the board informed the parties that it was of the preliminary view that the request contravened the principle of no reformatio in peius.
The proprietor raised an objection of suspected partiality against all board members under Art 24(3)
The board admitted the objection of partiality and the procedure was stopped, cf. T 0246/23-1 of 05.09.2025.
In T 0246/23-2 of 17.03.2026, the alternate board decided that
- The objection under Art 24(3) EPC was rejected.
- The appeal proceedings are to be continued.
- The request for apportionment of costs filed by the opponent was refused.
The proprietor’s point of view
The proprietor argued in essence that an objection with respect to the principle of no reformatio in peius could only be raised by another party, and in no case by the board.
Since the board raised the objection ex officio it was “on the side” of the opponent/appellant and thus suspected to be partial.
This position was supported by established case law, in particular by decision T 1544/07, where the deciding board explicitly refrained from raising the prohibition.
The original board’s partiality was even more apparent given that the legal member had also sat on the board that decided case T 1544/07 and must have contributed substantially to that decision.
Other indications in the file also supported the proprietor’s justified suspicion that the original board was biased.
The opponent refrained from raising the prohibition objection themselves. Taking it up after the pointer from the original board is a change of their appeal case, and should not be admitted at this late stage.
The raising of the objection did not constitute an abuse of procedure, but a legitimate use of the procedural rights of the party.
The opponent’s point of view
The opponent argued that the suspicion was not justified. Art 114(1) gave the boards the power to raise objections ex officio, and this power was also not limited by the RPBA. The opponent also argued that the objection under Art 24(3) was not even admissible.
The opponent argued settled case law did not exist. Later case law, namely decision T 0882/17 held exactly the opposite, and expressly saw it as the board’s obligation to raise the prohibition objection ex officio.
At any rate, no board could be seen as partial for the sole reason that they had decided some issue against a party. The original board’s handling of the proceedings had been impeccable throughout the proceedings, including the discussion on the suspicion of partiality.
The objection raised by the proprietor was manifestly unfounded. This had caused an unjustified delay of the proceedings and as such substantial harm to the interests of the opponent, which justified a different apportionment of costs under Art 104(1).
The alternate board’s decision
Admissibility of the objection of partiality
The original board decided that the objection was admissible and the alternate board saw neither any special circumstance, nor any legal basis for reviewing this finding of the original board.
Given the imminent retirement of all three affected board members of the original board, the whole case might have to be re-heard anyway.
Thus the subsequent board might be equally confronted with the same allegation of partiality with the same arguments that are before the board now. An early decision on this issue appeared desirable for both parties and for reasons of procedural efficiency in general.
In the alternate board’s understanding, the proprietor relies on two core arguments:
(1) the specific nature of the prohibition of reformatio in peius, which prevents the board from raising it ex officio, and
(2) the established case law on this matter.
For the alternate board, the findings of the relevant decisions of the Enlarged Board, G 9/91, G 10/91, did not become obsolete with the valid RPBA entering into force. These decisions are based on the interpretation of the EPC, and not on the RPBA in force at that time, which might have changed with a revision of the RPBA. The EPC 2000 revision also did not change the applicability of these decisions.
The specific nature of the prohibition of reformatio in peius
The alternate board did not consider this prohibition to be so exceptional as to completely escape the board’s powers under Art 114(1). The prohibition is special to the extent that it cannot arise in opposition proceedings, but only in appeal proceedings.
It is also true that it can only be raised against the patent proprietor, and as such it always serves the interests of the opponent. Otherwise the prohibition can also be invoked as the defence of the proprietor, where the proprietor is the sole appellant, cf. G 9/92 and G 4/93, Headnote I.
Practically any objection of a board raised ex officio in an inter-partes procedure will be disadvantageous for only one side in a typical situation, or at least will affect the parties’ positions unequally.
Therefore, raising such an objection can always be perceived as being in a certain contradiction with the board’s obligation to remain neutral towards the parties.
However, if parties were free to raise the objection of suspicion of partiality in all those cases where a board exercises its powers under Art 114(1), this would mean that such powers would be effectively eliminated. This would be a manifestly absurd outcome.
The legal effects of the prohibition are very similar to those of Art 123(3), which is a provision undisputedly serving the interests of the public as well, not only those of the opponent.
Arguably, where a patent is upheld in a limited version and the proprietor does not appeal this decision, also the public may legitimately assume, relying on the relevant decisions of the Enlarged Board G 9/92 and G 4/93, that subject-matter not falling under the claims as maintained cannot be later reclaimed by the proprietor, even if initially covered by the granted claims.
The board noted that in Reasons 17 of G 9/92 and G 4/93, for a minority of the members of the EBA, the principle of ex officio examination takes priority. This opinion was supported by the preparatory materials of the EPC.
The proprietor put emphasis on the principle of party disposition, and argued that the board’s raising the prohibition ex officio contradicts this principle. The Board understands that this principle, also referred to as “ne ultra petita“.
The proprietor appeared to be arguing that, under this principle, the original board should not have done more than the opponent, because the opponent itself did not invoke the prohibition as a defence.
As found by decision T 1544/07, a right protecting a party may be waived, and this waiver must be respected (volenti non fit iniuria). This finding appeared to be approved by other decisions, T 1175/22, Reasons 2.4, T 0646/08, Reasons 4.
The board was not convinced that the principle of party disposition should be interpreted so broadly so as to unconditionally prohibit a board from raising the prohibition on that basis.
This principle concerns the substantive outcome of the proceedings, i.e. the scope of the legal effects sought, and does not extend to those legal arguments that are raised by either the parties or the court for achieving the requested legal effects.
The unconditional bar to apply the prohibition ex officio is also not derivable from the referred T 1544/07, and the subsequent approving decisions.
Relevant case law
As the relevant case law is concerned, this argument is manifestly unfounded.
There is no settled case law that would forbid the board to raise the objection ex officio. This is not even derivable from the cited T 1544/07.
A far more strict position is taken by T 0882/17, Reasons 3.20. After a very detailed analysis, the deciding Board in T 0882/17 squarely disagreed with T 1544/07 and unambiguously states that the board not just may, but must take the prohibition into account, and also ex officio. This decision has been followed by other decisions, T 1773/22, Reasons 5.1, T 1472/21, Reasons 3.1.2.
Contrary to what the proprietor has argued, the case law is not “settled” at all, and certainly not in the sense as argued by the proprietor.
The board was not aware of any decision stating that a board is formally not allowed to raise a prohibition, unconditionally and as a matter of principle, under any circumstances, e.g. irrespective of the opponent’s later statements. There is no such statement in the CLBA.
Different apportionment of costs
The fact that the whole case must be re-heard because of the retirement of the members of the original board is certainly very unfortunate and the board sees no reason to doubt that this is against the interests of the opponent. However, this is a circumstance beyond the proprietor’s sphere of responsibility and therefore cannot be imputed to it.
Under these circumstances the board cannot qualify the procedural conduct of the proprietor as an abuse of procedure. Other reasons of equity were not given and are not apparent to the board.
Comments
In view of Art 114(1), it is not thinkable that a board should be withheld to raise ex officio the prohibition of the reformation in peius.
If this would be the case, the proprietor would obtain an undue advantage, not only towards the actual opponent, but also over future infringers.
When a patent as maintained infringes Art 123(2) and when the opponent is the sole opponent, the EBA decided that a proprietor could amend the claim in order to avoid immediate revocation, cf. G 1/99, OJ 2001, 381 However, Art 123(3) remains the absolute limit of any amendment in G 1/99. This is a further reason for a board to raise the prohibition ex-officio.
Art 138 (1,d) mentions Art 123(3) [and Art 123(2), cf. Art 138 (1,c)] a ground for revocation.
Since the prohibition of the reformatio in peius is not among the grounds for , it is thus of utmost importance that a board of appeal applies this prohibition irrespective of whether the opponent has raised the objection. As the board explained, the prohibition of the reformatio in peius benefits to the public at large. Art 138 (1,d) would then not have to be actionned
As far as apportionment of costs is concerned, using an absolute procedural right does not in principle constitute an abuse of a procedural right, cf. T 0626/15, Reasons 3 and 4.
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