CASELAW - reviews of EPO Boards of Appeal decisions

T 803/17 – T 882/17 - Prohibition of the reformatio in peius and admissibility of the opposition

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Both decisions are interesting as they relate the principle of the prohibition of the reformation in peius to questions of admissibility of the opposition.

In both decisions the opponent was the sole appellant.

The first decision, T 803/17, deals with the case of the opposition being rejected.

The second decision, T 882/17, deals with the case of the patent being maintained in amended form.

Both decisions will be dealt with in the same post.

  1. The opposition was rejected T 803/17

1.1 Brief outline of the case

The opponent appealed the OD’s decision to reject the opposition.

At the beginning of the opposition procedure the proprietor raised doubts about the admissibility of the opposition as the identity of the opponent was not certain.

The opponent then filed a request for correction of the opponent’s name under R 139. In a communication the OD informed the parties that “the request for a correction of the name of the opponent under R 139 was hereby accepted and the notice of opposition was admissible” and gave reasons for this decision. The opponent’s name was then corrected.

The opposition was eventually rejected.

1.2 The proprietors’ position

The proprietors essentially argued that the identity of the opponent as indicated in the notice of opposition could not be established without any doubt. As the opposition had been rejected in the decision under appeal, the principle of the prohibition of reformatio in peius was not affected when considering the opposition inadmissible.

The proprietors further argued that there had been multiple options and therefore reasonable doubts as to the identity of the opponent had excluded a correction of the opponent’s name under R 139.

Firstly, the allegation that “Calibre Search”, at the given address, could also refer to a natural person or other legal forms such as a partnership is merely speculative and not supported by any evidence.

1.3 The opponent’s position

The opponent essentially argued that the proprietors were not permitted to raise the inadmissibility of the opposition within the scope of the opponent’s appeal. In substance, the identity of the opponent as indicated in the notice of opposition could be established without any doubt.

1.4 The board’s position

As the OD did not allow a separate appeal under Art 106(2) on the decision on the admissibility of the opposition, that decision could only be appealed together with the OD’s final decision. Hence, even if one does not consider the admissibility of the opposition as such an indispensable procedural requirement, it follows from this link that the OD’s decision on the admissibility of the opposition and the underlying reasoning is to be treated as an issue which is part of the OD’s final decision.

UFor the board, the principle of the prohibition of reformatio in peius does not apply separately to each point or issue decided (Case Law of the Boards of Appeal, 10th edition 2022, V.A.3.1.1).

The board concluded 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.

If an opposition is considered inadmissible in the appeal proceedings, an appellant whose opposition was rejected in the decision under appeal as unallowable would not be in a worse position than if it had not appealed, as in both cases the patent would be maintained as granted.

The legal reasons leading to this result, including whether the opposition is rejected as inadmissible or unallowable, do not fall within the scope of the principle of the prohibition of reformatio in peius.

In the present case, the admissibility of the opposition can therefore be considered regardless of whether or not this issue is considered as being subject to the principle of the prohibition of reformatio in peius.

1.4.1 On the correction of the opponent’s name

The board held firstly that the proprietors’ allegation that “Calibre Search”, at the given address, could also refer to a natural person or other legal forms such as a partnership is merely speculative and not supported by any evidence.

Secondly, as stated by the OD, it was apparent from the opponent’s name in the notice of opposition as filed (“Calibre Search”) that only the legal form was omitted.

Thirdly, it is clear that the name “Calibre Search” refers to a single company. There is no indication that this term could refer to a multitude of companies acting as joint opponents, as was alleged by the respondents.

Fourthly, the opponent’s representative’s only reflects that the representative, upon being confronted with the proprietor’s observations on the opposition and being unaware that a second company was registered at the same address, verified the facts with his client prior to submitting a request for correction. Hence the statement according to which matters were clarified bears no relevance for assessing whether the identity of the opponent could be established or not.

The correction of the opponent’s name thus introduced what was originally intended. The correction was also filed without delay, which was not disputed by the respondents.

The board concluded that the OD’s decision to correct the opponent’s name under R 139 was correct, as well as its decision to consider the opposition admissible. The identity of the opponent could be established on the basis of the information in the notice of opposition.

1.4.2 As to the substance

The board confirmed the OD’s decision to reject the opposition.

  • The patent was maintained in amended form T 882/17

2.1 Brief outline of the case

The case is parallel to T 803/17 with the difference that the patent was maintained in amended form.

The opponent was the solely appellant.

The patent was eventually maintained as decided by the OD.

2.2 The proprietor’s position

The proprietors requested that the opposition be found inadmissible and the patent be maintained as granted. They essentially argued that the identity of the opponent as indicated in the notice of opposition could not be established without any doubt. Decision G 1/99 (exception to the prohibition of the reformatio in peius) should be applied by analogy to allow for an exception to the principle of the prohibition of reformatio in peius.

2.3 The opponent’s position

The opponent essentially argued that the respondents could have filed an appeal themselves and were not permitted to raise the inadmissibility of the opposition within the scope of the opponent’s appeal. In substance, the identity of the opponent as indicated in the notice of opposition could be established without any doubt.

2.4 The board’s position

Like in the parallel case, T 803/17, the board held that the OD’s decision on the admissibility of the opposition and the underlying reasoning is to be treated as an issue which is part of the OD’s final decision.

For the board, the opponent being 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 Opposition Division in its interlocutory decision, cf. G 9/92 and G 4/93, point 2 of the order.

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 legal effect of that order on the appellant; see T 1437/15, Reasons 3.2.2, with reference to G 9/92, Reasons 14 and 16; see also parallel case T 803/17, Reasons 3.5.

Since the patent was maintained in amended form and should the Board consider the opposition inadmissible, setting aside the decision under appeal and maintaining the patent as granted, the net result would be that the solely-appealing opponent would be in a worse position than if it had not appealed. Thus the question whether the principle of the prohibition of reformatio in peius prohibits such a result does arise.

The Board considered it appropriate to first assess whether and, if so, to which extent the principle of the prohibition of reformatio in peius prohibits it from taking account of the admissibility of the opposition in the present case before dealing with this question in substance.

The Enlarged Board in G 1/99 under certain conditions recognised a narrow exception to the principle of the prohibition of reformatio in peius to the benefit of the patent proprietor. The Enlarged Board’s reasoning in G 1/99 is largely built on the statement in G 9/92 and G 4/93, Reasons 16, that amendments by the non-appealing patent proprietor which go beyond defending the patent in the version maintained by the Opposition Division “may be rejected if they are neither appropriate nor necessary”.

The exception recognised in G 1/99 (exception to the prohibition of the reformatio in peius) is limited to claim amendments made during the appeal proceedings which extend the scope of the patent in comparison to the version maintained by the Opposition Division. Such broadening claim amendments are only permitted under very strict conditions.

The Enlarged Board stated that it would be inequitable for the patent proprietor not to have the opportunity to mitigate the consequences of an error of judgement by the Opposition Division which caused a contravention of Art 123(2), cf. G 1/99, Reasons 14.

For the board, invoking the inadmissibility of the opposition has nothing to do with a claim amendment made in reaction to an objection which has been submitted by the opponent or the Board during the appeal proceedings within the meaning of G 1/99.

Generally speaking, invoking the inadmissibility of the opposition is not the only possible way for a patent proprietor to avoid revocation of a patent due to an opponent’s appeal either. G 1/99 thus concerns an entirely different situation from the present case and can therefore, contrary to the respondents’ view, not be applied by analogy.

For the board, it seems that a patent proprietor who did not appeal an interlocutory decision by the OD is barred from raising the inadmissibility of the opposition as a mere respondent in order to achieve the maintenance of the patent as granted. If the opponent is the sole appellant, G 9/92, G 4/92 and G 1/99 do not seem to allow account to be taken of the inadmissibility of the opposition in a way which leads to this result.

The present board was of the opinion that this matter has been assessed differently in several decisions by technical boards of appeal.

2.4.1 T 1178/04

The leading decision in this regard is T 1178/04 (OJ 2/2008, 80). It is stated therein that the admissibility of the opposition is an indispensable procedural requirement which must be examined ex officio in the appeal proceedings and which is not subject to the principle of the prohibition of reformatio in peius (Reasons 18-36).

This view has been adopted in other decisions as well, although usually only with regard to the inadmissibility of the opposition being an indispensable procedural requirement to be examined ex officio, e.g. T 577/16, Reasons 1.1; T 2596/19, Reasons 3.2, and only in some cases also with regard to it not being subject to the principle of the prohibition of reformatio in peius, e.g. T 1423/06, Reasons 2.3.

It is to be noted, however, that in none of these decisions has a board ordered maintenance of the patent as granted due to the inadmissibility of the opposition even though the opponent had been the sole appellant against an interlocutory decision maintaining the patent in amended form.

The present Board disagreed with the approach in T 1178/04.

2.4.1.1 The origin of the prohibition of the reformatio in peius

It is stated in T 1178/04 that the principle of the prohibition of reformatio in peius as recognised by the Enlarged Board of Appeal was mainly taken from German law. Authors of sources of German legal literature (Schulte, Patentgesetz mit Europäischem Patentübereinkommen, 7th edition 2005, § 73 PatG, mn 76 and 77; Benkhard, Patentgesetz, 10th edition 2006, § 79 PatG, mn 10, were in favour of the view that the inadmissibility of an opposition is an indispensable procedural requirement and not subject to the principle of the prohibition of reformatio in peius.

2.4.1.2 Analysis of the case law of the Federal Court of Justice

Without entering into too much detail, the present board considered that the position adopted by the Federal Court of Justice in X ZB 6/71 “Sortiergerät”, according to which the principle of the prohibition of reformatio in peius was generally not applicable to indispensable procedural requirements was not compatible with the more recent case law of the Federal Court of Justice in areas of law other than patent law.

In the decision of 18 December 1985, IVb ZB 677/81, Reasons 3.b)bb), the Federal Court of Justice explicitly deviated from the predominant view in the legal literature at the time and stated that indispensable procedural requirements which must, at least under German law, indeed always be examined ex officio, are not generally exempt from the principle of the prohibition of reformatio in peius.

The Federal Court of Justice further stated that the rationale underlying the principle of the prohibition of reformatio in peius concerned not only the principle of party disposition but also the right to a fair trial.

A deviation from the principle of the prohibition of reformatio in peius is therefore not justifiable for any indispensable procedural requirement.

Rather, the different principles involved have to be weighed against each other, and in particular indispensable procedural requirements, the lack of which is so severe that it enables the person affected to file an action for the retrial of the case under German civil procedural law (“Wiederaufnahmeklage”), can justify an exception to the principle of the prohibition of reformatio in peius.

The board noted that an action for retrial under German law was not comparable with a petition for review under Art 112a as the EPC does not provide for such an action for retrial and, even if one considered the possibility to file a petition for review under Article 112a EPC in this context, the inadmissibility of the opposition would not qualify as a possible ground for a petition for review under Art 112a(2) and R 104.

The board further noted that the German Patent Court (“Bundespatentgericht”) stated in its decision of 2 February 1988, 12 W (pat) 91/86, Reasons III., that the specifics of opposition appeal proceedings in patent law rather support the inadmissibility of the opposition being subject to the principle of the prohibition of reformatio in peius.

2.4.1.3 Conclusion of the board with respect to T 1178/04 and German law

The line of argument in T 1178/04 relating to German law is in the Board’s opinion not persuasive, and cannot justify a deviation from the principle of the prohibition of reformatio in peius as established by the decisions of the Enlarged Board of Appeal in G 9/92, G 4/93 and G 1/99.

If anything, the opposite can be deduced from German case law, namely that what have been termed indispensable procedural requirements are not generally exempt from this principle. The Board considered the more recent case law of the Federal Court of Justice on this matter both more authoritative, see J 14/19, Reasons 6.10, and more convincing than the legal literature referred to in T 1178/04.

2.4.2 G 3/97 and G 4/97 – Opposition by a third party

Another line of argument in T 1178/04 employed in support of the view that the admissibility of the opposition is an indispensable procedural requirement and not subject to the principle of the prohibition of reformatio in peius relates to the decisions of the Enlarged Board of Appeal G 3/97 and G 4/97.

The present board was not convinced by this line of argument either. In particular, the Enlarged Board in G 3/97 and G 4/97 did not address the principle of the prohibition of reformatio in peius. Nor was there any reason to do so, because in the first case T 301/95 underlying the referral both the patent proprietor and the opponent had appealed, and in the second case T 649/92 the opposition had been rejected in the decision under appeal. Hence the principle of the prohibition of reformatio in peius did not play any role in either of the two underlying cases.

Point 6 of the reasons in G 3/97 and G 4/97 is not concerned with the principle of the prohibition of reformatio in peius, but rather with the point in time at which an objection related to the admissibility of the opposition may be raised, in particular with the question of whether such an objection may be raised for the first time in the appeal proceedings.

2.4.2.1 Effect of the RPBA on G 3/97 and G 4/97

Rules of Procedure of the Boards of Appeal which were in force at the time the decisions G 3/97 and G 4/97 were taken did not contain any provisions on late-filed submissions.

Such provisions were only introduced with the Rules of Procedure 2003 (OJ EPO 2003, 61).

The provisions of the Rules of Procedure of the Boards of Appeal, i.e. currently the RPBA 2020, implement Art 114(2) in a way which is in principle binding on the Boards of Appeal, cf. Art 23 RPBA20.

Therefore the statements of the Enlarged Board of Appeal in G 3/97 and G 4/97, Reasons 6, may have to be interpreted differently in view of the current legal framework.

For example, it does not necessarily follow from G 3/97 and G 4/97 that any objection related to the admissibility of the opposition raised at the end of the oral proceedings before the Board must always be taken into account under Art 13(2) RPBA20, regardless of whether exceptional circumstances present themselves, regardless of whether the objection should have already been submitted in the opposition proceedings under Art 12(6) RPBA20, and regardless of whether this objection will prima facie be successful. In any case, G 3/97 and G 4/97 did not address the principle of the prohibition of reformatio in peius.

2.4.3 Admissibility of an opposition and prohibition of the reformatio in peius

Numerous decisions of the Boards of Appeal have stated that the admissibility of the opposition is an indispensable procedural requirement, cf. T 646/13, Reasons 1.2: “established case law”. However, even if it is assumed that the admissibility of the opposition qualifies as an indispensable procedural requirement which can and must be examined at all stages of the appeal proceedings ex officio, i.e. even if none of the parties raises an objection in this regard, it does not follow from this qualification that the principle of the prohibition of reformatio in peius would not be applicable. In the Board’s view, the latter does in particular not follow from G 3/97 and G 4/97, Reasons 6.

Moreover, if G 3/97 and G 4/97 were to be understood as limiting the principle of the prohibition of reformatio in peius in regard to the admissibility of the opposition, these decisions would be in contradiction to the previous decisions of the Enlarged Board in G 9/92 and G 4/93.

The present board was of the opinion that, had it really been the Enlarged Board’s intention in G 3/97 and G 4/97 to limit its previous rulings and the above-mentioned statements in G 9/92 and G 4/93, it can be expected that the Enlarged Board would have explicitly addressed these decisions in its reasoning for G 3/97 and G 4/97. This was, however, not done.

It is hardly conceivable that the Enlarged Board of Appeal in G 1/99 would not have referred to its previous statements in G 3/97 and G 4/97 if these statements had indeed had any relevance to the principle of the prohibition of reformatio in peius and, more specifically, to any possible exceptions to that principle to the benefit of the patent proprietor.

Moreover, in G 7/91 and G 8/91 (withdrawal of the appeal) the Enlarged Board held that the appeal proceedings are regarded as terminated by virtue of the withdrawal of the sole appellant’s appeal in so far as the substantive issues settled by the contested decision at first instance are concerned (Reasons 12).

The Enlarged Board rejected the claim that Article 114(1) EPC constituted a legal basis for a continuation of appeal proceedings after the appeal has been withdrawn (G 7/91 and G 8/91, Reasons 8). It also considered the argument that a board may sometimes have to “stand by and watch” while a “flawed” decision of the department of first instance becomes final, and did not deem this decisive (G 7/91 and G 8/91, Reasons 10.2).

2.4.4 The possible behaviour of the opponent in appeal

Hence, if the admissibility of the opposition were not subject to the principle of the prohibition of reformatio in peius, an opponent as the sole appellant against an interlocutory decision could still withdraw its appeal whenever this objection is considered successful by a board, for example during the oral proceedings before a board. This would, firstly, be at odds with the statement in G 9/92 and G 4/93, Reasons 12, that “the concept that it should be possible for a sole appellant to be compelled as a result of opposing requests to withdraw its appeal” is absent from the EPC.

Secondly, the appeal proceedings would then be terminated and the Board could anyway no longer order maintenance of the patent as granted due to the inadmissibility of the opposition. In other words, the Board could then no longer do anything about the inadmissibility of the opposition, and the interlocutory decision under appeal, lacking this procedural requirement, would become final.

2.4.5 The conclusion of the board

If the opponent is the sole appellant against an interlocutory decision maintaining a patent in amended form, an objection related to the inadmissibility of the opposition is subject to the principle of the prohibition of reformatio in peius. In such a procedural situation, the Board is prohibited from ordering maintenance of the patent as granted due to the inadmissibility of the opposition.

2.4.6 Further considerations of the board

Even if the prohibition of the reformatio in peius does not apply to the admissibility of the opposition, the question of whether the Board then may not assess the admissibility of the opposition at all, whether it may only assess it in the context of the admissibility of the opponent’s appeal, or whether that assessment may only be carried out in the context of the allowability of the appeal, is not answered.

2.4.6.a First option – no consideration at all

The first option would be not to consider a patent proprietor’s objection related to the admissibility of an opposition at all.

The Board is not convinced by such an approach. Three reasons were brought forward by the board: when discussing the allowability of the appeal; a not admissible opposition could nevertheless lead to the revocation of a patent; it would not be incompatible compatible with the case law that the inadmissibility of the opposition is an indispensable procedural requirement.

2.4.6.b Second option – consideration in the context of the admissibility of the appeal

The requirements for an admissible appeal are listed in R 101 and the admissibility of the opposition is not one of them. Although there is a certain overlap between the requirements for an admissible appeal and the requirements for an admissible opposition, these requirements are conceptually distinct, and it therefore does not seem justified to generally assess the admissibility of the opposition in the context of the admissibility of the appeal.

2.4.6.c Third option – consideration in the context of the allowability of the appeal

Under Art 110, if the appeal is admissible, the Board of Appeal must examine whether the appeal is allowable. If the reason for the inadmissibility of an opposition does not exceptionally also cause the appeal to be inadmissible, the admissibility of an opposition is to be assessed in the context of the allowability of the appeal.

2.4.7 The principle of the prohibition of reformatio in peius and remittal

The admissibility of an opposition in the context of the allowability of the appeal usually does not lead to a remittal of the case. More generally speaking, however, the Board noted that the principle of the prohibition of reformatio in peius also applies in the event of a remittal.

In the Board’s view, is also possible in a situation where the opponent is the sole appellant against an interlocutory decision of the Opposition Division maintaining the patent in amended form. However, in such a situation, the Opposition Division’s second decision after remittal of the case may not put the opponent in a worse situation than if it had not appealed (subject to the exception to the principle of the prohibition of reformatio in peius as set out in G 1/99).

2.5 The board’s final decision

As in the parallel case, the opposition was considered admissible, and the OD’s decision was confirmed.

Comments

It was a deliberate choice to present the two decisions in the same post. They have been taken by the same boards and the legal developments are both related and highly interesting.

The question of the admissibility of an opposition in relation with the prohibition of the reformation in peius has not been discussed often and it is difficult to consider that there is an established line of case law. This was quite different in matters of adaptation of the description, where two decisions went clearly against an long line of case law.  

Conclusions derivable from the decisions

Correction of the opponent’s name is not an easy endeavour as the identity of the opponent has to be established with certainty at the beginning of the opposition purpose and the status of opponent is not freely transferable, cf. G 4/88 and G 2/04.

In the present a correction of the name of the opponent under R 139 was accepted by the OD. As the decision of the OD was after the publication of G 1/12 (OJ 2014, A114), the latter could also have been quoted.

The conclusions derivable from the two present decisions when the opponent is the sole appellant are the following:

  • If the opposition is rejected, the prohibition of the reformatio in peius is irrelevant, as the opponent cannot be put in a worse position.
  • If the patent is maintained in amended form, the prohibition of the reformatio in peius applies to the admissibility of the opposition.

It will have to be seen if further decisions of the same kind follow.

Should other decisions go in a different direction and even go back to T 1178/04, Art 20(1) RPBA20 will apply.

Influence of the RPBA on decisions of the EBA

However, the question of whether the RPBA20 may render certain decisions of the EBA and from technical or legal boards obsolete is a question which has become very important.

This question can also be considered as indirectly raised in T 1042/18, commented in this blog.

One day, the question that will have to be answered is the articulation of the RPBA with the various “legal” texts of the “EPC legal order”.

The main aspect of the “EPC legal order” is the EPC as such which can only be amended by a Diplomatic Conference.

Other parts of the “EPC legal order” are the Implementing regulations and the RPBA which are eventually approved by the AC within the limits of Art 164(2).

The Implementing regulations are approved by a 3/4 majority and the RPBA are approved by a simple majority. It might thus well possible to see in this different ways of approval a kind of hierarchy of legal norms.

The President of the Office is also allowed to “legislate”, see Art 10(2,a) or e.g. R 2, 53, etc.

There are thus at least 3 levels of legislation, not to mention the notifications of the EPO.

I would however not go as far as to claim as has been done during the OP in G 1/21 that the EPC can simply be amended by secondary legislation whatever one might understand under this heading.

https://www.epo.org/law-practice/case-law-appeals/recent/t170803eu1.html

https://www.epo.org/law-practice/case-law-appeals/recent/t170882eu1.html

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