Key points
- In this case, Board 3.3.01 follows Board 3.4.02 in T 2242/18 and the non-appealing patentee is trapped by an amendment it made before the OD.
- The patentee amended claim 1 by adding a feature (not a disclaimer) before the OD. The opponent objected that this amendment violated Art. 123(2). The OD found the amended claim to be allowable. The opponent appeals (only).
- The Board finds the amendment to lack basis in the application as filed.
- The patentee submits a request deleting the feature at issue.
- The Board: "In G 1/99 (OJ 2001, 381), the Enlarged Board of Appeal considered it equitable, under certain circumstances, to deviate from the prohibition of reformatio in peius to give the patent proprietor the opportunity to mitigate the effects of an error of judgement made by the opposition division that would have the revocation of the patent as a direct consequence. The error of judgement of the opposition division dealt with in G 1/99 was to allow an amendment which had the effect of limiting the scope of the claims that was objected to in appeal (see point 14 of the Reasons)."
- "the exception to the prohibition of reformatio in peius must be based on a new situation in the appeal proceedings (see G 1/99, Reasons point 12, "reasons which were not raised at the first instance"), which must be causal for the board's divergent opinion (see also T 61/10)."
- To cite the relevant sentence in G 1/99: "However, in particular if the patent cannot be maintained for reasons which were not raised at the first instance, the non-appealing proprietor deserves protection for reasons of equity."
- "The respondent [patentee] did not show, and it was not established, that new reasons against claim 1 of the main request, on account of the feature "increasing serum iron", arose on appeal which would have caused the revocation of the patent. For these reasons, the circumstances of this case do not justify an exception to the prohibition of reformatio in peius, and auxiliary request 1 must be rejected."
- The patent is revoked.
EPO T 2471/17
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-247117-inescapable-reformatio-in.html
