CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1175/22 – A board is not obliged to apply ex officio the prohibition of the reformatio in peius-Carry over requests

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The patent relates to a gear pair that includes a first gear and a second gear engaged and paired with each other.

Brief outline of the procedure

the OD found that claim1 as granted lacked N over D9=EP 1 887 103.

The patent was maintained by the OD according to AR1.

The opponent appealed the decision of maintenance..

The board held that claim 1 as maintained was lacking IS over D9 and CGK.

The board decided that the patent could be maintained according to AR2 in opposition = AR1 in appeal.

The case is interesting in that it deals with the prohibition of the reformation in peius when the opponent is the sole appellant and with carry over requests. .

The opponent’s point of view

During the OP the opponent requested not to admit AR1ap into the appeal proceedings because it violated the principle of reformatio in peius.

The opponent argued that the prohibition of reformatio in peius was an “important aspect” and therefore constituted an exceptional circumstance within the meaning of Art 13(2) RPBA. Moreover, according to the opponent, the board had to apply the prohibition of reformatio in peius of its own motion.

The proprietor’s point of view

The proprietor requested that the opponent’s request and objection of breach of the prohibition of reformatio in peius not be admitted into the appeal proceedings pursuant to Art 13(2) RPBA.

The board’s decision

The board did not follow the opponent’s allegation that the prohibition of reformatio in peius should be more “important” than the provisions of the EPC.

Furthermore, the Board held that it is not obliged to examine this prohibition of its own motion. From the pertinent decisions G 9/92, G4/93 and G 1/99 of the EBA it is not derivable that the board had to apply the prohibition of reformatio in peius of its own motion.

Moreover, in previous case law it was held that, 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 opposition division, the board does not see any reason why it should apply the principle of the prohibition of reformatio in peius of its own motion and referred to T 1544/07, Reasons 2.5.

The board added that it is generally accepted that in appeal proceedings the principle of party disposition applies, meaning that parties can put forward, withhold or withdraw their requests or objections as they see fit. Following this principle, any right protecting the appellant against an outcome that puts it in a worse position than if it had not appealed, may be waived, withheld or withdrawn.

The admissibility of the appellant’s request and objection is therefore subject to the “regular” admissibility provisions as laid down in the RPBA.

AR 1 corresponds to AR 2 during opposition proceedings. It was resubmitted with the reply to the statement setting out the grounds of appeal Hence, the opponent could have objected to this request at any stage of the appeal proceedings. It chose, however, to withhold the objection until the OP before the board without invoking any exceptional circumstances or giving any reasons for the late submission.

Therefore, the new request and objection of the appellant were not admitted into the appeal proceedings under Art 13(2) RPBA.


Prohibition of the reformatio in peius

It is clear that the opponent wanted the patent revoked.

It is, to my knowledge, or I have forgotten it, the first time that an opponent invokes the prohibition of the reformatio in peius against a carry over request.

Even if this objection had been raised in statement of grounds of appeal, it is more than doubtful that the prohibition of the reformation in peius applies to carry over requests. This would mean that a proprietor could never defend itself against an appeal in opposition after maintenance in amended form.

As the objection was raised after the communication of the board, it was easy for the latter to dismiss it under Art 13(2) RPBA.

The board made also clear that it is not obliged to raise, ex-officio, the prohibition of the reformatio in peius.

Carry over requests

AR1ap=AR2op is, in the terminology of certain boards, a “carry over” request, since the OD did not decide on it, as it maintained the patent according to a higher ranking AR1.

It is refreshing to see that the present board, contrary to other boards, did not consider carry over requests as an amendment to the proprietor’s case under Art 12(4) RPBA.

This was done in T 1135/22, commented on this blog,  as well as in T 246/22, also commented on this blog. The boards were different but had the same chairperson. In my blog, I criticised those two decisions.

Carry over AR should should not be considered as amendments to the proprietor’s case. It is not an issue for the proprietor if lower ranking AR are not dealt with by an OD. They should be automatically be admitted in appeal.

On the other hand, in T 664/20, also commented in this blog, the board required the opponent, when entering appeal to immediately raise all objections against carry over requests, even if it was not clear which AR would be pursued in appeal by the proprietor. As the opponent did not act as wished by the board, the objections raised in reply to the maintained requests where not admitted in the procedure.  

That the primary aim of the RPBA was to increase the output of the boards is a matter of fact. This aim should however not lead to purely formal decisions of the boards.

In view of the present decision, it can be concluded that in matters of carry over requests, the procedural case law of the boards is divergent.

After all the EPO has the duty not to maintain patents which have no raison d’être. It has to preserve the interest of the public at large. By sticking to the RPBA as some boards do, the EPO forgets its original duties, not only to grant patents but also to revoke patents if there are good reasons to do so. .  

On the procedure

The patent EP 3 187 752 is classified in  F16H 55/17 and F16H 55/06. The SES was carried out in F 16H.

The SESR mentioned one X document EP 1 503 113 classified in F16H 55/06, F16H 57/04 and C23C 16/3, and was, inter alia searched, in F16H and C23C.

 D9=EP 1 887 103 = JP 2005 061610 A was not mentioned in the ISR or the SESR. It is classified in C23C14/06 and C23C16/26.

EP 3 187 752,  EP 1 503 113 and  EP 1 887 103 belong to the same applicant/proprietor, Nissan Motors.

One possible conclusion is that the search was stopped to early when one single X document was found.

Finding an X document does not qualify the search as beeing complete. But under the production pressure, it might do, even if later a patent is granted.

In any case, the patent should not have been granted and later maintained in the form it was.

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