Case law - reformatio in peius Flashcards
G9/92 and G4/93 Reformatio in peius in inter partes proceedings
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.
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.
This decision was clarified by G1/99.
G10/93 Reformatio in peius in ex parte proceedings
In an appeal from a decision of an examining division in which a European patent application was refused, the Board of Appeal has the power to examine whether the application or the invention to which it relates meets the requirements of the EPC. The same is true for requirements which the examining division did not take into consideration in the examination proceedings or which it regarded as having been met. If there is reason to believe that a requirement of the EPC has not been met, the Board shall include this ground in the proceedings.
G1/99 Reformatio in peius in inter partes proceedings
In principle, an amended claim, that would put the opponent and sole appellant in a worse situation than if no appeal had been filed, must be rejected. However, 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. In such circumstances, in order to overcome the deficiency, the patent proprietor/respondent may be allowed to file requests, as follows: in the first place, for an amendment introducing one or more originally disclosed features which limit the scope of the patent as maintained; if such a limitation is not possible, for an amendment introducing one or more originally disclosed features which extend the scope of the patent as maintained, but within the limits of Article 123(3) EPC; finally, if such amendments are not possible, for deletion of the inadmissible amendment, but within the limits of Article 123(3) EPC.
