No. of citations: 161
Further to G 4/93 (and G 9/92), G 1/99 also looks at the consequences of the principle of party disposition, namely the prohibition of reformatio in peius, in opposition-appeal proceedings where the Opposition Division has upheld the patent in amended form.
G 4/93 held that in such cases, if the proprietor is the sole appellant, neither the Board nor the non-appealing opponent may challenge the maintenance of the patent in amended form (G 4/93, Headnote I)
In the case where the opponent is the sole appellant, G 4/93 held that the proprietor is primarily restricted to defending the patent in the form in which it was maintained by the Opposition Division. Amendments proposed by the patent proprietor, however, may be rejected as inadmissible by the Board "if they are neither appropriate nor necessary" (G 4/93, Headnote II; see here for a brief summary of G 4/93).
G 1/99 now takes a closer look at the latter situation, where the opponent is the sole appellant. In particular, G 1/99 explains how the expression "... if they are neither appropriate nor necessary" in Headnote II of G 4/93 is to be understood.
The Enlarged Board in G 1/99 generally confirmed that the principle of party disposition, and thus the prohibition of reformtio in peius, applies under the EPC (see point 8 of the reasons). However, the principle is not to be applied unconditionally. They stated:
"... Taking into consideration that in appeal proceedings before the EPO the application of the principle of prohibition of reformatio in peius derives from its own case law, the Enlarged Board of Appeal has also to weigh the consequences of this application, if it appears that they might be unsatisfactory." (point 11 of the reasons)They considered that in the case where the opponent is the sole appellant against a decision of the Opposition Division to maintain the patent in amended form, it would be inappropriate not to allow the proprietor to amend his claims, if such amendment is necessary to undo an Art. 123(2) violation, which occurred during the opposition procedure, and which was allowed by the Opposition Division. Such amendments are to be allowed, even if it meant that the opponent and sole appellant is put is a worse situation than if he had not appealed, i.e., even if the opponent is thereby hit by reformatio in peius. In such situations, reformatio in peius was exceptionally allowed.
The Enlarged Board, however, did not allow any type of amendment. In order to restrict the negative effect of the amendment on the opponent to a minimum, the Enlarged Board held that in such a case, the proprietor may, in this order,
- amend the claims by introducing one or more originally disclosed features which limit the scope of the patent as maintained (in this situation the opponent and sole appellant does not suffer from reformatio in peius);
- If this is not possible, amend the claims by introducing one or more originally disclosed features which extend the scope of the patent as maintained, but of course not extending beyond the scope of the patent as granted (Art. 123(3) (here reformatio in peius occurs);
- If amendments under 1 and 2 are not possible, the proprietor may delete the feature which led to the Art. 123(2) infringement, but within the limits of Article 123(3) EPC (here reformatio in peius is even worse).
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Headnote:
In principle, an amended claim, which would put the opponent and sole appellant in a worse situation than if it had not appealed, must be rejected. However, an exception to this principle may be made in order to meet an objection put forward by the opponent/appellant or the Board during the appeal proceedings, in circumstances where the patent as maintained in amended form would otherwise have to be revoked as a direct consequence of an inadmissible amendment held allowable by the Opposition Division in its interlocutory decision.
In such circumstances, in order to overcome the deficiency, the patent proprietor/respondent may be allowed to file requests, as follows:
- in the first place, for an amendment introducing one or more originally disclosed features which limit the scope of the patent as maintained;
- if such a limitation is not possible, for an amendment introducing one or more originally disclosed features which extend the scope of the patent as maintained, but within the limits of Article 123(3) EPC;
- finally, if such amendments are not possible, for deletion of the inadmissible amendment, but within the limits of Article 123(3) EPC.The full text of the decision can be found here.
Quotes from decisions citing G 1/99 can be found here.
