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Prohibition of reformatio in peius not applied

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Prohibition of reformatio in peius not applied

Prohibition of reformatio in peius not applied

In T1544/07 one of the opponents filed an appeal against the decision of the Opposition Division to maintain the opposed patent in amended form.

This would normally be a situation where the prohibition of reformatio in peius applies. But in this case, the Board of Appeal decided otherwise.

At the Oral Proceeding before the Board the respondent (patent proprietor) filed a main claim in which, in response to an objection of the appellant (opponent), the reference point for the amount of compound of Structure I had been deleted. This deletion of the reference point for the weight range of the compound of Structure I of from 10% to 90%, namely “based on the dialkylperoxydicarbonate”, led to an extension of the independent process claim vis-à-vis the claim as maintained by the Opposition Division. This means that the patent covers embodiments which were not covered by the patent as maintained by the Opposition Division, and, consequently, that the appellant is put in a worse position than if he had not appealed (reformatio in peius).

In principle, such an amended claim, which would put the opponent and sole appellant in a worse situation than if he had not appealed, must be rejected (cf. G 1/99). However, the Board considered in the first place that this amendment of the main claim arising from the appeal proceedings was necessary and appropriate and thus did not see any reason to question the admissibility of the amendment for procedural reasons. In the second place, the appellant was asked by the Board whether he objected to the deletion of the reference point as a possible reformatio in peius. In reply, the appellant indicated that he had no objections thereto even if he would thereby put himself in a worse position than if he had not appealed.

In this situation, the question arises whether the Board has to apply the prohibition of reformatio in peius of its own motion if the party affected deliberately refrains from making use of its right to invoke it. This question has not been addressed by the Enlarged Board of Appeal in the pertinent decisions (cf. G 9/92 and G 1/99).

Thus, since the opponent and sole appellant did 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 first instance, the Board did not see any reason why it should apply the principle of the prohibition of reformatio in peius of its own motion.

Consequently the main claim was admitted into the proceedings.

The patent was finally revoked for lack of inventive step.