EP 3 347 319 B1 relates to a retroreflective element with a plurality of first beads distributed throughout the composite core and a plurality of second beads at the perimeter of the composite core.
Brief outline of the case
Claim 1 as granted lacked N over D3=US2009/0291292.
The patent was maintained in amended form according to AR1.
The opponent appealed.
The board held claim 1 as maintained as lacking IS over D1=US 4 983 458.
Eventually the patent was revoked.
As the patent as maintained lacked IS, some AR were not admitted under Art 12(3+5) RPBA. Some further AR were not admitted in view of the prohibition of reformatio in peius as G 1/99 did not apply in the present case.
We will look at those latter AR.
The opponent’s point of view
AR 2 to 6, 3a to 6a and 1-2 to 1-5 should not be admitted in view of the prohibition of reformatio in peius.
The deletion of the features “and throughout the composite core” and “wherein the first beads or the second beads are glass ceramic beads” violated the principle of prohibition of reformatio in peius. The limitation of these features was not implicitly contained in the remaining features.
The proprietor’s point of view
The deletion of the feature “and throughout the composite core” did not change the scope of claim 1 because it was implicitly contained in the remaining features.
As to the feature “wherein the first beads or the second beads are glass ceramic beads“, similar circumstances to those underlying G 1/99 applied and therefore the deletion of this feature should be allowed.
The board’s decision
The feature “and throughout the composite core” contained in AR1 as maintained by the OD, i.e. the present MR, was not contained in the subject-matter of claim 1 of any of AR 2 to 6 and 1-2 to 1-5.
For the board, the feature “and throughout the composite core” may be deleted only if the remaining features of claim 1 ensure that the scope of protection is not broadened with respect to claim 1 as maintained. A further limitation relating to other features of the claim cannot compensate for the broadening implied by the omission.
The AR at stake do not contain any features implying the same limitation, nor do they further restrict the feature “and throughout the composite core” to a narrower definition.
Therefore, the omission of the feature “and throughout the composite core” infringes the principle of the prohibition of reformatio in peius because it would put the sole appellant in a worse situation than if it had not appealed.
These requests are therefore not allowable under G 1/99, cf. Headnote.
The feature “wherein the first beads or the second beads are glass ceramic beads“, which was contained in claim 1 of AR 1 as maintained by the OD, i.e. the present main request, was not contained in claim 1 of any of AR 3a to 6a.
The AR at stake do not contain any features implying the same scope, or further restricting the feature at issue to a narrower scope.
The exception of G 1/99, which relates to an inadmissible amendment, is not applicable. Claim 1 as maintained did not inadmissibly contain the deleted feature.
There is also no legal basis for extending to Art 56 the particular situation of an inescapable trap created by the OD allowing an amendment which infringes the requirements of Art 123(2) EPC, as claimed by the proprietor.
Therefore, the omission of the feature “wherein the first beads or the second beads are glass ceramic beads” infringes the principle of the prohibition of reformatio in peius because it would put the sole appellant in a worse situation than if it had not appealed.
These requests are therefore not allowable under G 1/99, cf. Headnote.
Comments
The present decision makes clear that G 1/99 only applies when the OD includes in the claim as maintained features infringing Art 123(2), and hence puts the proprietor in an inescapable trap.
That it cannot apply to Art 56 is also clear from the three possibilities given to the proprietor in order to overcome the infringement of Art 123(2) in the claim as maintained.
It also applies in the reverse direction. In T 436/22, Reasons 3.1, features were deleted in order to avoid an objection of added subject-matter against claim 1 as maintained. As claim 1 as maintained was not allowable due to lack of IS, the reason for making an exception to the principle of the prohibition of reformatio in peius put forward by the proprietor did not arise. It follows that AR 1a, 1b, 5a and 5b were not allowable.
However, in T 1843/09, the board admitted the deletion of a critical priority-destroying feature (f) as it was exceptionally justifiable while also respecting the rule that such an exception should only be construed narrowly.
In T 1843/09, the board held that there is nothing in that point or elsewhere in G 1/99 from which it can be derived that the three types of amendments and their order set out therein have to be considered as the sole equitable and, therefore, admissible amendments. Whether at all, to what extent and in what form any such exception may be granted has to be decided along these lines in each individual case with an aim to re-conciliate the adequate protection of the rights and interests of the sole appellant/opponent with the legitimate defence of the patent by the non-appealing proprietor.
On the procedure
Neither D1 nor D3 were mentioned in the ISR established by the EPO. They did however bear classification units in IPC classes (as well as CPC) in which the search was carried out.
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