EP 3 222 595 B1 relates to a hot plate device.
Brief outline of the case
The OD decided maintenance according to AR1. The proprietor appealed.
The board set aside the decision of maintenance and maintained the patent as granted. In other words, the opposition was thus rejected.
The case is interesting in view of some arguments of the proprietor.
The proprietor’s point of view
The interpretation of the claim features brought forward by the opponent violates the prohibition of reformatio in peius and should therefore not be admitted.
The arguments put forward in the opponent’s statement of defence on the interpretation of the claimed features, caused a clear deterioration of the proprietor’s position with respect of claim 1 upheld in the contested decision, and were therefore not admissible due to the prohibition of reformatio in peius.
The opponent’s objection, raised for the first time at the OP, that in E3 not the top layer but the colour layer described as opaque was to be regarded as ‘translucent’, was not admissible since translucency had already been argued in the proprietor’s statement of grounds of appeal and it could not be expected to deal with the new argument put forward for the first time at the OP.
The opponent’s point of view
The subject-matter of claim 1, and the reasoning presented for the first time at the OP, according to which the colour layer in E3 is already translucent, was not new as this line of argument was based on common general knowledge and should be admitted.
The board’s decision
For the board, the prohibition of the reformatio in peius does not refer to the interpretation of the subject-matter of the claim, but to the decision formula in the contested decision, The board referred to T 803/17.
In the catchword of T 803/17 (and in Reasons 3.5), it was held that
“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.”
The board added that, the preliminary remarks on the interpretation of the claim on pages 3 and 4 of the reply to the appeal do therefore not violate the prohibition the reformatio in peius. Nor do they contain any specific objections whose admissibility might have to be reviewed (especially since the clarity of the claims granted is not the subject of the opposition appeal proceedings).
Comments
The prohibition of the reformatio in peius was dealt with in G 9/92, OJ 1994, 875, and in G 4/93, OJ 1995, 875. A non-appealing party in opposition appeal proceedings cannot be put in a worse position as if it had not appealed.
If the patent was revoked, nothing worse could happen to the proprietor.
If the opposition was rejected, nothing worse could happen to the opponent.
If the patent is maintained in amended form, the proprietor cannot return to the claims of the patent as granted.
In G 10/93, OJ 1995, 172, the EBA decided that the prohibition of the reformatio in peius did not apply to ex-parte proceedings.
If the prohibition of the reformatio in peius applied to the arguments, a non-appealing party would be limited to the arguments it brought forward in first instance proceedings.
This does not mean that the procedural rules enshrined in the valid RPBA would not apply.
Common general knowledge
According to T 987/01 and T 378/15, and in the limits of the valid RPBA and their interpretation by the boards, which is not convergent, common general knowledge of the skilled person is never late, as it is an inherent part of his knowledge.
According to T 759/08, and in the limits of the valid RPBA and their interpretation by the boards, which is not convergent, common general knowledge of the skilled person does not bring about a change in the legal and factual framework of the proceedings.
At least those statements are valid in opposition proceedings.
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