An appeal was filed by two appellant-opponents against interlocutory decision of the Opposition Division [OD] to maintain EP2538794 in amended form requesting to set aside the decision and to revoke the patent. The OD decided claim 1 of Auxiliary Request 1 [AR1] filed during oral proceedings was allowable and that the amended description complied with Art. 84 EPC. The Patentee did not file an appeal.
Claim 1 of this request, the Main Request [MR] in appeal, is directed at a triglyceride-based dietary fat, wherein the dietary fat is a blend of natural fats. The term "natural fat" would neither exclude modified triglyceride molecules nor was relevant for the patentability of the claims.
The appellants found that the patent specification was incorrectly amended to reflect the added mandatory feature of claim 1 as maintained whereas the respondent (patentee) considered the amended description appropriate. The respondent filed an Auxiliary Request in reaction to the grounds of appeal filed by both appellant-opponents wherein the feature ‘’wherein said dietary fat is a blend of natural fats’’ has been deleted. Under Art. 15(1) RPBA the Board provided their preliminary opinion setting out it appeared the decision under appeal had to be set aside and the patent revoked.
In reaction to the preliminary opinion the respondent withdrew the request for oral proceedings ‘’should the Board maintain its preliminary opinion’’, after which the appellants withdrew their requests for oral proceedings. The oral proceedings were cancelled and a decision was taken by the Board.
The Board found that the discrepancy between the claims of the MR and the description cast doubt on the scope of the claim. ‘’Art. 84 EPC requires that the claims be supported by the description. This also applies to claims which have been amended in opposition (Art 101(3)(a) EPC).’’ Consequently the Board found the description of the patent does not comply with the requirements of Art. 84 EPC and the MR was held not allowable.
Appellant-Opponent 2 objected to the AR wherein claim 1 is broader than claim 1 of the MR since this broadening contravenes the prohibition of reformatio in peius. Under G1/99 limited exceptions to the rule against reformatio in peius are expressed: As set out in chapter V. A. 3. 1. 8 of the 2019 Case Law of the Boards of Appeal
‘’the Enlarged Board considered it inequitable for the patent proprietor not to be given a fair opportunity to mitigate the consequences of errors of judgment made by the Opposition Division. The patent proprietor should thus be allowed to file requests in order to overcome this deficiency, as follows:
The respondent did not bring forward any specific circumstances that may render such an AR allowable under G1/99. The Board as a consequence held the AR not admissible.
The decision under appeal was set aside and the patent revoked.