T 0178/03 citing G 0001/99:
{
[1,1] = In support of his argument that the Appellant was not now entitled to defend broader claims, the Respondent referred to decisions G 1/99 (point 6.3), J 12/85, T 299/89, T 156/90, T 234/86, T 831/90 and T 506/91.
}
T 0470/97 citing G 0001/99:
{
[1,1] = 1.2. Nach ständiger Rechtsprechung der Beschwerdekammern des EPA ist die Beschwerde gegen die Entscheidung der ersten Instanz Gegenstand des Beschwerdeverfahrens; diese Beschwerde muß begründet sein (siehe G 4/93, ABl. EPA 1995, 875, Punkt 9 und die im ABl. EPA noch nicht veröffentlichte G 1/99, Punkt 6.4).
}
T 0594/97 citing G 0001/99:
{
[1,1] = Interpretation of G 1/99</td>
[1,2] = At the end of the oral proceedings of 7 December 1999, the appeal proceedings were suspended until issue of the decision of the Enlarged Board of Appeal in case G 1/99.
[1,3] = (i) Each of the independent claims filed during the oral proceedings on 7 December 1999 cannot form the basis for an allowable request in the sense of the decision G 1/99, because these claims were not filed in order to either meet an objection put forward by the Appellant or to delete an inadmissible amendment.
[1,4] = 3. The admissibility of the amendments in respect of decision G 1/99 (OJ EPO 2001, 381)
[1,5] = 3.2. On the subject of the admissibility of the independent claim of either the main or the subsidiary request, Appellant I asserted that decision G 1/99 does not apply in the present case and that therefore the Respondent had not to be allowed to file requests based on these claims.
[1,6] = (i) According to the Order of G 1/99, the first condition for the admissibility of amendments filed by the proprietor/respondent which would put the opponent/appellant in a worse situation than if it had not appealed, is the existence of an objection put forward by the opponent/appellant during the appeal proceedings. In the present case, at the end of the oral proceedings of 7. December 1999, Appellant II withdrew its objection concerning the expression „... for the other quarters of the relevant cow“. Thus, it has to be assumed that there are no objections by the opponents/appellants with respect to this issue. Having regard to the decision G 4/93 (OJ EPO 1994, 875), the absence of objections by the appealing parties restricts the application of the principle of ex officio examination so that the Board has no right to object to this expression of its own motion. Thus, the first condition for the admissibility of amendments is not met.
[1,7] = (ii) According to G 1/99, the second condition for the admissibility of amendments is that „the patent as maintained in amended form would otherwise have to be revoked as a direct consequence of an inadmissible amendment...“. In the present case, the amendment is not inadmissible, since it represents a mere limitation having no technical contribution. Thus, also the second condition for the admissibility of amendments is not met.
[1,8] = 3.2.1. The Board cannot accept the interpretation of the order of the decision G 1/99 made by Appellant I for the following reasons:
[1,9] = (ii) The Order of G 1/99 refers to „an objection put forward by the opponent/appellant or the Board during the appeal proceedings“ (emphasis added), without distinguishing between the objections raised by the opponents/appellants and those raised by the Board.
[1,10] = (iii) Moreover, the interpretation of the Order of G 1/99 as submitted by Appellant I is not consistent with the reasoning of the decision, in particular with section 14, in which it is stated the following: „In order to decide on the request of the appellant/opponent, the Board of Appeal has to decide whether or not the amended set of claims as maintained by the Opposition Division is patentable. This means in particular that the Board has to consider whether or not a limiting feature added during the opposition proceedings fulfils the requirements of the EPC“ (emphasis added).
[1,11] = (v) Decision G 4/93 clearly refers to a restricted application of the principle of ex officio examination in respect of „the extent to which the patent is opposed in the notice of opposition“ (see section 3) and to „the extent of examination of grounds for opposition“ (see section 4). These issues were dealt with in the decision G 9/91 (OJ EPO 1993, 408) and the opinion G 10/91 (OJ EPO 1993, 420). In this respect, it has to be noted that the interpretation of the Order of G 1/99 as submitted by Appellant I is inconsistent both with the decision G 9/91 and with the opinion G 10/91 in so far as there it is stated that „... in case of amendments of the claims ... in the course of opposition or appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC (e.g. with regard to the provisions of Article 123(2) and (3) EPC)“.
[1,12] = (vi) Moreover, even if it were to be assumed that Appellant II withdrew its objection in respect of this issue, although in a letter dated 27. September 2001 it asked the Board to take a decision on the basis of the documents presented by the opponents, this would not be relevant, because the Order of G 1/99 refers only to „an objection put forward by the opponent/appellant ... during the appeal proceedings“. In other words, the fact that Appellant II has raised an objection during the appeal proceedings implies that the first condition of G 1/99 is met. The later withdrawal of the objection would not change this situation.
[1,13] = 3.3. Having regard to the comments above, the amendment resulting in the deletion of the expression „for the other quarters of the relevant cow“ was clearly proposed by the Respondent in order to overcome a deficiency and to avoid a revocation. Since this amendment does not result in the extension of the scope of the granted patent (Article 123(3) EPC), it is admissible in the sense of the G 1/99.
}
T 0727/99 citing G 0001/99:
{
[1,1] = G 0001/99 applied</td>
[1,2] = By the deletion of the churn turbulent flow regime requirement, claim 1 was broader than the claim as maintained by the Opposition Division. Since the respondent did not appeal, this amounts to a reformatio in peius situation which, in view of the Enlarged Board of Appeal decision G 1/99, was not allowable. The new particle size limitation in the fourth auxiliary request was not suitable to overcome this objection. The further limitation in the fifth auxiliary request to particular catalysts was also not appropriate because they were a selection from a broader range and this selection had not been disclosed in combination with the other features of the claim. A more suitable amendment to replace the unallowable selected feature „churn turbulent flow“ would be its replacement by „bubbly or churn turbulent flow“. This was based on the application as originally filed and excluded the transition flow regime shown in D10, page 707, Figure 16.
[1,3] = The omission of the churn turbulent feature in the fourth auxiliary request B did not give rise to a reformatio in peius situation because under practical conditions supported cobalt catalysts having a size as required by claim 1 could only be fluidized to the indicated height in a churn turbulent flow regime. Moreover, G 1/99 did not set an absolute bar on the reformatio in peius if a reasonable further limitation to compensate the broadening of a claim by deleting the unallowable feature was not possible. The purpose of the appellant’s proposal to replace churn turbulent with bubbly or churn turbulent was not clear. If it intended to exclude a transition flow regime, it rendered the claim unclear, because a transition flow regime has never been recognized as a separate flow regime in the art. If it covered all flow regimes apart from slug flow, then there was no difference with the wording of claim 1 according to the fourth auxiliary request.
[1,4] = 5. Since the feature of churn turbulent flow, present in claim 1 as maintained by the Opposition Division, has been deleted from claim 1 of the fourth auxiliary request and the respondent has not filed an appeal against the decision of the Opposition Division, the question of reformatio in peius arises. Although reformatio in peius should generally be avoided, there is no absolute bar. According to the Enlarged Board of Appeal decision G 1/99 (OJ EPO 2001, 381) the removal of an inadmissible amendment introduced during the opposition procedure must be compensated by introducing one or more originally disclosed features which limit the scope of the patent as maintained, or if that is not possible, by one or more originally disclosed features which extend the scope of the patent as maintained, but within the limits of Article 123(3) EPC. Only if the latter is also not possible may the inadmissible amendment be removed without further limitation. In the present case claim 1 has been further limited by the additional requirement that the catalyst particles have an average diameter larger than 30 ìm. According to the respondent this limitation has the effect that in practice, in order to obtain sufficient fluidisation of the particles, the gas velocity must be so high that the flow regime is churn turbulent and thus no question of reformatio in peius arises. The Board does not dispute that, if the claimed method is performed in a large scale commercial reactor, the gas velocity must be so high that a churn turbulent flow is unavoidable, but is not convinced that this flow regime must be present in a medium size demonstration reactor, which is also covered by claim 1. An allowable amendment which would limit the flow regime beyond the limits set in claim 1 as maintained is not available. The appellant’s proposal to define the flow regime as „churn turbulent flow or bubbly flow“ would not limit the scope of the claim as granted. Moreover, the scope of the present claim would not be changed if this definition simply means the absence of plug flow but would introduce an ambiguity if it would exclude a not originally defined transition range. Said proposal is therefore neither suitable nor „possible“ in the sense of G 1/99. Claim 1 of the fifth auxiliary request also does not solve the problem. It further limits the claim but introduces a choice of catalyst carriers from a group of carriers, whereby it is at least questionable if such a choice in combination with the other features of the claim can be unambiguously derived from the application as originally filed. Moreover, also the use of catalysts according to claim 1 of the fifth auxiliary request would not limit the flow regime to churn turbulent flow. In the Board’s view, therefore, the limitation in claim 1 of the fourth auxiliary request is the most reasonable limitation to compensate for the reformatio in peius caused by the deletion of the feature of churn turbulent flow, objected to under Article 123(2) EPC, and is in conformity with the rules laid down in the order of G 1/99.
}
T 0079/01 citing G 0001/99:
{
[1,1] = The respondents requested that the appeal be deemed as not having been filed and the patent be maintained as granted accordingly. In particular they maintained that since the difference between the due amount of the appeal fee (EUR 1022,-) and the sum actually paid (EUR 356,-) cannot be considered as a small amount (which could be overlooked pursuant to Article 9(1) of the Rules relating to fees, last sentence) the appeal fee could not be considered as paid within the time limit for the appeal. Furthermore they objected to the appellants assumptions based on the principle of good faith and quoted the decisions G 2/97 (OJ EPO 1999, 123), G 1/99 (OJ EPO 2001, 381) and T 690/93 dated 11. October 1994.
[1,2] = 7. Nor can be shared, in the light of the established case-law of the Enlarged Board of Appeal, the argument suggested in some early decisions of the Boards of Appeal (quoted by the appellants) according to which the EPO must execute a debit order in accordance with what is plainly the substance of that order, even though the amount specified therein is incorrect (see, in particular, T 152/82 above). The appeal procedure is to be considered as a judicial procedure (G 9/91 OJ EPO 1993, 408, point 18 of the reasons; see also G 8/91 OJ EPO 1993, 346, point 7 of the reasons and, more recently, G 1/99 above, point 6.6 of the reasons). This implies that the general principles of court procedure apply to this procedure, such as, in the inter partes proceedings, the principle of impartiality or equal treatment of parties to the proceedings. According to this principle the Board of Appeal, as well as the all EPO staff, must refrain from any activity from which one of the parties could take an unwarranted advantage (see T 173/89 dated 29 August 1990, point 2 of the reasons; T 690/93 above, point 3.5 of the reasons; T 1072/93 dated 18 September 1997, point 5.3 of the reasons; T 253/95 dated 17 December 1997, point 3 of the reasons). It follows from above that, having the appellants specified in the notice of appeal the (wrong) amount of the sum that the EPO was authorized to debit for the payment of the appeal fee, the EPO could not debit a different, much higher amount, corresponding to the provision of Article 2 No. 11. of the Rules relating to fees without violating the above quoted principle.
}
T 0281/01 citing G 0001/99:
{
[1,1] = 2.5. The feature „wherein the layers of the device are configured such that the electrical resistivity of the ferromagnetic layers is a maximum when the magnetizations of said two ferromagnetic layers adjacent a non magnetic layer are aligned antiparallel to one another and a minimum when aligned parallel with one another“, which was introduced in claim 1 maintained by the opposition division in contravention of Article 123(2) EPC, has been deleted. The deletion of this feature from present claim 1, which widens the scope of the claim and puts the opponent, who is the sole appellant, in a situation worse than if he had not appealed, appears at first sight to offend against the prohibition of reformatio in peius (G 9/92, OJ 1994, 875). However, an exception to this principle may be made in circumstances, as in the present case, where the patent as maintained in amended form would otherwise have to be revoked as a consequence of an inadmissible amendment held allowable by the opposition division in its interlocutory decision (G 1/99, OJ 2001, 381).
}
T 0389/01 citing G 0001/99:
{
[1,1] = a) La Chambre a soulevé l’article 123(2) CBE conformément à l’article 111(1) CBE. Selon cet article la Chambre peut exercer les compétences de l’instance qui a pris la décision attaquée. Dans ce cas-ci, elle est tenue à vérifier toutes les modifications apportées aux revendications pendant la procédure de première instance (voir G 9/91, raisons 19 ; G 1/95, raisons 5.3 et 5.4 ; G 1/99, raisons 12).
}
T 0068/02 citing G 0001/99:
{
[1,1] = The Board cannot agree with the appellant. The version of the claims which is filed, even as a main request, must be considered as provisional at least until a decision is taken. Enlarged Board of Appeal decision G 1/99 dealt with the situation of whether a broadening of the scope of the claims in appeal proceedings may be permissible after a decision of the Opposition Division based on claims of narrower scope, i.e. at a procedurally more advanced point than in the present case. It follows from G 1/99 that a return from a narrower claim to a broader claim is not automatically excluded, in particular with respect to problems connected with Article 123(2) EPC. Whilst the Enlarged Board of Appeal was considering the question of reformatio im peius it nevertheless implicitly considered the question of whether it is possible to go back to claims of wider scope after a main request of narrower scope has been filed. This question was implicitly answered in the affirmative since the Enlarged Board of Appeal considered that there were circumstances which would warrant this. Whilst the Enlarged Board of Appeal were concerned with the particular situation of an actual ground under Article 123(2) EPC, in the present case the opponents had objected to a new main request being filed at the start of the oral proceedings so that the only way to overcome such an objection was withdrawal of the newly filed main request. When a request is filed it is examined both by the opponents and the Opposition Division for compliance with Article 102(3) before a decision is taken. This article includes the provision that the patent as amended complies with the requirements of the Convention. It is clear that this examination may reveal problems, in particular under Articles 84 and 123(2) EPC, for which the only solution is to return to an earlier version of the claims. It is thus permissible within the framework of opposition proceedings for the proprietor to return to the patent as granted unless special circumstances, e.g. explicit abandonment of the subject-matter, might indicate otherwise.
[1,2] = 6.2. Appellant I alternatively requests in this respect that the Board should itself correct the minutes of the oral proceedings, possibly after having heard as witnesses the parties which were present at the oral proceedings. It belongs to the jurisprudence of the Boards of Appeal as exemplified in T 838/92 and T 231/99 that the minutes of the oral proceedings do not form part of the decision of the Opposition Division. In the present case the part of the decision entitled „Facts and Submissions“ the Opposition Division contains the statement that the minutes of the oral proceedings form part of the decision. The Board understands this statement to mean that the statements made in the minutes of the oral proceedings form part of the facts relating to the decision. As already explained above the content of minutes is the responsibility of the persons who authenticated them. This means that the responsibility for correcting them can only rest with those persons. Since the responsibility for the minutes cannot be transferred from the authenticating persons, the resolution of a dispute concerning what took place could not lead to a correction of the minutes by the Board, but only to a conclusion that the minutes were either right or wrong regarding the disputed aspects. In the present case none of the disputed statements, or lack of statements, in the minutes affects the outcome of the appeal so there is no need to consider whether the minutes truly reflect what took place in the oral proceedings.
[1,3] = 7.1. Appellant I has proposed referring a number of questions to the Enlarged Board. The first five questions concern the actions to be taken with respect to a partiality objection to a member of an Opposition Division. Questions 1 and 3 do not have a bearing on the present case as the Board has concluded as indicated above that the Opposition Division did make an implicit decision concerning partiality. Further the Board has concluded that the actions of the Opposition Division do not indicate any partiality (point 5. above). With respect to questions 2 and 5 the Enlarged Board has already indicated views in this matter in its decision G 5/91 and the present Board has come to the conclusion that the actions of the Opposition Division were in line with that decision. An answer to question 4 is not required for the Board to reach a decision in the present case so that there is no basis for a referral of this question to the Enlarged Board of Appeal. Questions 6 and 7 concern the procedure for correcting the minutes of the oral proceedings before the Opposition Division. Jurisprudence in the form of for instance T 838/92 and T 231/99 already exists. This Board agrees with those decisions so that there is no need for these questions to be put to the Enlarged Board of Appeal.
}
T 0240/04 citing G 0001/99:
{
[1,1] = 16.1 Zu dem im EPÜ vorgesehenen zweiseitigen Beschwerdeverfahren hat die Große Beschwerdekammer den Grundsatz entwickelt, dass dieses Verfahren vorwiegend dem Recht der Beteiligten auf Überprüfung der erstinstanzlichen Entscheidung in einem gerichtsförmigen Verfahren dient. Der verwaltungsgerichtliche Charakter des zweiseitigen Beschwerdeverfahrens wurde in den Entscheidungen der Großen Beschwerdekammer G 9/91 (ABl. EPA 1993, 408), G 8/91 (ABl. EPA 1993, 346), G 7/91 (ABl. EPA 1993, 356) sowie G 1/99 (ABl. EPA 2001, 381) hervorgehoben. Insbesondere in G 9/91 wurde festgestellt, dass der Hauptzweck des zweiseitigen Beschwerdeverfahrens darin besteht, der unterlegenen Partei die Möglichkeit zu geben, die ihr nachteilige Entscheidung anzufechten und ein gerichtliches Urteil über die Richtigkeit der erstinstanzlichen Entscheidung zu erwirken. Somit ist der faktische und rechtliche Rahmen des Einspruchsverfahrens, wie in der Entscheidung G 9/91 (siehe Entscheidungsgrund Nr. 6) definiert, grundsätzlich für das weitere Beschwerdeverfahren bestimmend.
}
T 0223/05 citing G 0001/99:
{
[1,1] = 5.1 Although the scope of this appeal is restricted to the claims maintained by the Opposition Division as set out in point 2.5 above, it is to be examined whether the proposed set of claims of the present request meets in its entirety the requirements of Article 123(2)(3) (see G 9/91, OJ EPO 1993, 408, point 19) and whether the present request does not put the Opponent (the sole Appellant) in a worse situation than if it had not appealed (see G 1/99, OJ EPO 2001, 381, Order).
[1,2] = 5.3 In conclusion, the amendments do not raise any objection under Article 123(2)(3) EPC and the set of claims resulting therefrom do not put the Opponent and sole Appellant in a worse situation than if it had not appealed (see G 1/99, OJ EPO 2001, 381, Order).
}
