Key points
- A patentee adds a negative feature to claim 1. The claim is about an apparatus. The OD finds the amended claim allowable; the patentee makes it then its main request. The opponent appeals.
- The Board finds that the feature is not disclosed in the application as filed as a negative feature.
- The question is if the feature is a permissible undisclosed disclaimer (G2/03).
- The Board concludes it is not, because it excludes more than necessary to restore novelty over the Art. 54(3) document. Moreover, it contributes to inventive step (makes a technical contribution) which is not permitted (G 1/16)
- The patentee filed an auxiliary request wherein the which adds a condition to the disclaimer. Hence, it is a broadening claim amendment compared to the claims held allowable by the OD.
- Hence, G 4/93, hn. II applies: ' 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 patentee invokes the exceptions of G 1/99 to the prohibition of reformatio in peius (r.4.2).
- The Board notes that G 1/99, hn. specifies t hat: " 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."
- The Board reasons " uring the appeal proceedings" means that the relevant objection is raised for the first time in appeal proceedings, or is supported by new facts, i.e. was not raised (by the opponent) in the first instance proceedings (r. 4.3.1). The Board in particular cites G 1/99, r.12: ' Indeed, objections raised in the first instance may be supported by new facts and new objections may be raised in appeal proceedings with the consequence that the basis on which limitations have been made may still change and it would not be equitable to allow the opponent/appellant or the Board to present new attacks and to deprive the proprietor/respondent of a means of defence. "
- The Board, in translation: " In this context, in the Board's view, the wording of the condition for an exception in the decision-formula of decision G 1/99 (cf. "to overcome an objection [...] raised in appeal proceedings") does not merely refer to objections raised in the complaints procedure must be taken into account, but must concern objections that are either only raised as such in the complaints procedure or at least substantiated with new reasons or new facts in the complaints procedure. An application of the exception rule of decision G 1/99 therefore presupposes that a new objection is introduced in the appeal proceedings or that an objection already raised in the first-instance proceedings is based on new grounds or new facts or that there is a causal connection between the restrictive objection to be deleted feature and a new fact in the appeal proceedings (see also e.g. decisions T 61/10, Reasons, point 1.4 and T 1033/08, Reasons, point 3, in particular the fifth to seventh paragraphs). This view of the board is moreover confirmed by the following statement in decision G 1/99: "But especially if the maintenance of the patent is opposed to reasons that were not brought forward in the first instance, the non-appealing patentee deserves protection for reasons of equity." (Reasons for the decision, No. 12, last sentence)."
- The Board finds that the objection to the disclaimer was already raised in the first instance proceedings, without a change of facts in appeal.
- " Furthermore, neither the mere follow-up of an objection by the appellant [opponent] nor the fact that the board, unlike the opposition division, found that objection to be well-founded constitutes per se a reason which would justify such an equitable amendment of a claim in the present case . The objection raised here, as submitted by the appellant, was raised along with other objections during the first instance proceedings in relation to different versions of the disclaimer filed in the written and oral proceedings before the opposition division expect that even if the opposition division did not consider any of these objections to the final version of the disclaimer submitted during the first-instance oral proceedings to be valid, these objections could be pursued further in the appeal proceedings by the opponent in the event of an appeal."
- The Board, on the patentee making the claim with the disclaimer the main request at the end of the first instance proceedings: " For example, instead of leaving the patent as granted as the main request, the appellants decided to submit the version of claim 1 that the opposition division considered allowable as part of a main request. With this approach, the appellant deliberately waived the opportunity to file an appeal [*] and also accepted the possible procedural consequences of an appeal on the part of the opponent as the sole appellant. She also had to reckon with the fact that, in the event of such an appeal, the objections could be pursued by the appellant and that at least one of the objections could be considered valid by the board. In this context, the situation described here is, as submitted by the appellant, a direct consequence of the respondent's conduct of the proceedings, without - unlike in the cases set out in decision G 1/99 - there being special circumstances which, taking into account considerations of equity, warrant an exception from deterioration prohibition could justify."
- The patent is revoked.
- As a comment, multiple independent claims in the same category can be used by patentees in opposition, i.e. one independent claim with the disclaimer and another independent claim using normal features as amendments.
- As a further comment, at *: it is possible that the patentee saw simply no arguments for defending the main request and that the appeal would have been inadmissible. An inadmissible appeal may still lead to a prohibition of reformation in peius for the opponent as the sole admissible appellant.
EPO T 2242/18
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/07/t-224218-disclaimers-and-prohibition-of.html
