Admissibility of opposition is subject to reformatio in peius principle in T0882/17

This article is about case: T 088/17

Background

The interlocutory decision of the Opposition Division [OD] maintaining EP2471492 in amended form was appealed by the Appellant-Opponent [AO]. In first instance, the Patentee [P] found there were doubts as to the identity of the opponent and submitted that the opposition was inadmissible. In response, O requested correction of the opponent’s name under Rule 139 EPC. The OD accepted the request for correction and the opposition was held admissible. Admissibility was not discussed during oral proceedings before the OD and the minutes and decision did not address the admissibility of the opposition.

The Appeal

AO requested to set aside the decision under appeal and to revoke the patent. The respondents (proprietors) [RP] requested (i) the appeal be found inadmissible, (ii) the opposition be found inadmissible, or (iii) the appeal to be dismissed. AO responded that (i) the appeal was admissible since substantiated arguments against the reasoning in the appealed decision were provided.

In reaction to RP’s request to (ii) find the opposition inadmissible AO stated that, in their appeal, it was requested to overturn the OD’s decision and revoke the patent. The OD’s decision to consider the opposition admissible was not appealed by AO. Moreover, since AO was not adversely affected by this decision, it would also not have been possible for AO to appeal it. RP could have filed an appeal, yet did not do this and therefore, RP are limited to responding to the grounds raised by AO and cannot raise their own grounds. RP held that AO appealed the entire decision, including the part finding the opposition admissible. However, since the OD did not provide an opportunity to appeal that part of the decision separately, RP argued that Art. 106(2) EPC would apply.

Finding the opposition inadmissible would lead to the patent being maintained as granted, which would, according to RP, be in compliance with the principle of reformation in peius when applying G 1/99 and taking into account exceptions are allowed as a matter of equity.

Reasons for the Board’s Decision

Since the statement of Grounds of Appeal [GoA] provided substantiated reasons and specifically addressed the reasoning of the appealed decision the GoA complied with Rule 99(2) EPC and was admissible.

In reaction to the request to find the opposition inadmissible the Board stated that ‘’if the Board considered the opposition inadmissible, set aside the decision under appeal and maintained the patent as granted, the solely appealing opponent would be in a worse position than if it had not appealed. Thus, the question arises whether the principle of the prohibition of reformation in peius prohibits such a result’’. Under the principle of the prohibition of reformation in peius, it is unlawful to worsen the position of the appellant because of its own appeal.  RP referred to the exceptions recognized in G 1/99 to the prohibition of reformation in peius. The Board indicated that said exceptions are not applicable in the case at hand.

The Board observed that it seems that a patent proprietor who did not appeal a decision by the OD [to maintain the patent in amended form] cannot raise the inadmissibility of the opposition as a respondent in order to achieve the maintenance of the patent as granted. If the opponent is the sole appellant, G 9/92, G 4/92 and G 1/99 do not seem to allow account to be taken of the inadmissibility of the opposition in a way which leads to this result.

However, the latter has been assessed differently in several decisions by the Boards. In T 1178/04 it is stated that the admissibility of the opposition is an indispensable procedural requirement which must be examined ex officio in appeal and which is not subject to the principle of the prohibition of reformatio in peius (Reasons 18-36). T 1178/04 concerned the purported transfer of an opposition though, not the admissibility of the opposition. The Board in that decision found the purported transfer of the opposition invalid and set aside the decision under appeal. The Board therein observed that the OD, after the remittal, would not be bound by the previous decision. T 1178/04 added that admissibility of the opposition (instead of transfer opposition) was reviewed in earlier decisions such as T 577/16 and T 2596/19, even though the opponent was the only appellant. The parties nor the Boards in these cases raised the prohibition of reformatio in peius.

The present Board disagreed with T 1178/04: The Board in T 1178/04 emphasised that the prohibition of reformatio in peius originates from the German law wherein authors of German legal literature are cited that are in favour of the idea that inadmissibility of an opposition is an indispensable procedural requirement and not subject to the principle of prohibition of reformatio in peius. The Board of the present case further provided an extensive discussion of German case law concluding that the German federal Court of justice indispensable procedural requirements must under German law be examined ex officio, and are not generally exempt from the principle of the prohibition of reformation in peius. The Board also noted that that the German Patent Court in opposition appeal proceedings rather support the inadmissibility of the opposition being subject to the prohibition of reformation in peius.

The present Board further commented that previous Board decisions have stated that the admissibility of the opposition is an indispensable procedural requirement (T 646/13). However, assuming that the admissibility of the opposition qualifies as an indispensable procedural requirement which can and must be examined at all stages of the appeal proceedings ex officio; it does not follow from this qualification that the principle of the prohibition of reformatio in peius would not be applicable. In the Board's view, the latter does not follow from G 3/97 and G 4/97 dealing with opposition’s on behalf of a third party either.

In G 7/91 and G 8/91 the Enlarged Board held that appeal proceedings are considered terminated by the withdrawal of the sole appellant's appeal, in so far as the substantive issues settled by the contested decision at first instance are concerned: "if the admissibility of the opposition were not subject to the principle of the prohibition of reformatio in peius, an opponent as the sole appellant against an interlocutory decision could still withdraw its appeal whenever this objection is considered successful by a board, for example during the oral proceedings before a board. The appeal proceedings would then be terminated and the Board could anyway no longer order maintenance of the patent as granted due to the inadmissibility of the opposition. In other words, the Board could then no longer do anything about the inadmissibility of the opposition, and the interlocutory decision under appeal, lacking this procedural requirement, would become final. Both of these considerations speak against the inadmissibility of the opposition not being subject to the principle of the prohibition of reformatio in peius."

The current Board came to the conclusion that if the opponent is the sole appellant against an interlocutory decision maintaining a patent in amended form, an objection to the inadmissibility of the opposition is subject to the reformation in peius principle. In that situation, the Board is thus prohibited from ordering maintenance of the patent as granted due to the inadmissibility of the opposition.

The latter did not answer whether a Board may not assess the admissibility of an opposition at all or may only assess it in the context of the admissibility of the opponent's appeal, or whether that assessment may only be carried out in the context of the allowability of the appeal. In any case, none of these options would contravene the principle of the prohibition of reformatio in peius. The Board concluded that “ the admissibility of an opposition is to be assessed in the context of the allowability of the appeal.’’ ‘’Under this approach, an opponent's (admissible) appeal against the interlocutory decision of an Opposition Division maintaining the patent in amended form is dismissed as unallowable if the Board finds the opposition inadmissible." The Board considered the alleged inadmissibility of the opposition thus in the context of the allowability of the opponent’s appeal.

Decision of the Board (of Appeal)

The Board decided the OD's decision to correct the opponent's name under Rule 139 EPC was correct, as well as its decision to consider the opposition admissible. The claims of the main request were found to be allowable and the appeal was dismissed.