G 0009/92 - "Non-appealing party" - #7

Citation rank: 7
No. of citations: 254

G 9/92 (in consolidated proceedings with G 4/93, see same review here) looked at the consequences of the "principle of party disposition" on inter partes opposition-appeal proceedings.

Two Boards of Appeal referred questions to the Enlarged Board of Appeal under Art. 112(1)(a) EPC. The questions arose from three appeal cases, all of which were concerned with an appeal against the decision of an oppositon division to maintain the patent in amended form according to Art. 101(3)(a) EPC. In one case the proprietor was the sole appellant, in another case only the opponent appealed. In the third case both parties appealed.

The Technical Boards referred the question whether a Board of Appeal, in proceedings before it, could put the sole appellant in a worse position than if it had not appealed, or whether there should be prohibition of reformatio in peius (Latin: "change for the worse"). Specifically, they asked the Enlarged Board:

"Can the Board of Appeal amend a contested decision to the Appellant's disadvantage? -   If so, to what extent?"

The Enlarged Board pointed out that the proceedings before the EPO are generally goverened by the principle of party disposition, i.e., that the parties define the extent of the proceedings through their intial requests. This principle is also known as the principle of "ne ultra petita" (Latin: "not beyond the request").

The Enlarged Board mentioned that decisions G 9/91 and G 10/91 already clarified that the principle of party disposition applies to opposition and opposition-appeal proceedings before the EPO (see G 9/92, points 3 and 4 of the reasons). The principle of ex officio examination (Art. 114(1) EPC), on the other hand, found little application in appeal proceedings (points 4 and 5 of the reasons).

Under the principle of party disposition, in opposition-appeal cases in which the patent is maintained in amended form, the appeal of the proprietor, who is the sole appellant, can only be understood as a request of the proprietor-appellant to maintain its patent in unamended form, or at least with a scope somewhere between that of the patent upheld in opposition and the scope as granted. In any case, the proprietor's appeal cannot be interpreted as being a request to further limit the appellant's patent. Therefore, the Enlarged Board in G 9/92 found that it would be against the principle of party disposition to limit a patent to less than the scope maintained in opposition, if the proprietor is the sole appellant (see Headnote I).

Where the opponent is the sole appellant, the situation is the opposite. It would be against the principle of party disposition, if an Appeal Board broadened the scope of the patent (e.g., maintained the patent as granted). This would certainly be against the opponent/sole appellant's initial request. The proprietor is thus primarily restricted to defending the patent in the form in which it was maintained by the Opposition Division (see Headnote II).

If both, the proprietor and the opponent, appeal against the decision to uphold the patent in amended form, the principle of party disposition clearly can no longer be fully observed. This is impossible, because of the parties' initial requests are contradicting. In this situation, an Appeal Board is free to broaden or lessen the scope of the patent as mainteined by the opposition division all the way from maintenance as granted to revocation in full.

Remark: G 1/99 ("Reformatio in peius") later took a closer look at the situation in which the opponent is the sole appellant (Headnote II, below). G 1/99 exceptionally allowed broadening of the scope of the claims (beyond the scope of the claims maintained in opposition, but within the limits of Art. 123(3)) in the case where the proprietor would otherwise lose its patent because of a Art. 123(2) infringement which occurred during the opposition stage. The cautious wording "may be rejected as inadmissible by the Board of Appeal if they are neither appropriate nor necessary" in Headnote II, below, was thus interpreted as as allowing certain exceptions. See here for a brief summary of G 1/99.

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Headnote:

I. If the patent proprietor is the sole appellant against an interlocutory decision maintaining a patent in amended form, neither the Board of Appeal nor the non-appealing opponent as a party to the proceedings as of right under Article 107, second sentence, EPC, may challenge the maintenance of the patent as amended in accordance with the interlocutory decision.

II. If the opponent is 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. Amendments proposed by the patent proprietor as a party to the proceedings as of right under Article 107, second sentence, EPC, may be rejected as inadmissible by the Board of Appeal if they are neither appropriate nor necessary.

The full text of the decision can be found here.