Oppositions (9) – Reformatio in peius

The Boards of Appeal have adopted a prohibition against reformatio in peius to prevent an appealing party being put in a worse position than if they had not appealed, where the other party has not appealed or where there is no other party (such as examination appeals).  When both sides file appeals, the prohibition is not applied. 

When a party does not file an appeal against an opposition decision but the other side does, they become a party as of right and are permitted to defend their case. However, they are not permitted to put themselves in a better position than if the other party had not appealed. 

Where the patentee is the only appellant against a decision to maintain a patent in amended form, the board of appeal is not permitted to reconsider the validity of the claims as maintained in opposition.  If the board of appeal could do so, the patentee's position would become worse (and the opponent's better) compared to no appeal being filed. Similarly, the non-appealing opponent is not permitted to argue against the decision to maintain the patent, but can argue against maintenance in a form that was refused by the opposition division. 

The situation is more complex where the opponent is the only appellant against maintenance of a patent in amended form.  For example, when a patent is maintained in amended form and only the opponent appeals. If the board of appeal disagrees with the opposition division and finds the amendments unallowable (due to added matter or clarity), the prohibition against reformatio in peius may prevent the patentee saving their patent because deleting the feature would broaden the claim and hence put the patentee in a better position than if the opponent had not appealed. Loss of the patent in this situation is considered unfair as the amendment was incorrectly found to be allowable by the opposition division.  The patentee is therefore permitted to make amendments to fix the problem, even though they are placed in a better position. 

The enlarged board of appeal have restricted exceptions to the prohibition and amendments made to fix the problem must be attempted in a specific order.  The patentee must first attempt to solve the problem by introducing a further feature, or narrowing, the claim.  Only if this is not possible can the patentee attempt an amendment which broadens the claim, and hence is not subject to the prohibition. 

The first option to be attempted by the patentee must be to replace the problematic feature with another feature which is broader than the claim allowed by the opposition division, but narrower than, or the same as, the claims as granted. If this is not possible, then the problematic feature may be deleted (again, provided the resulting claim is narrower than, or the same as, the claims as granted). 

The precise details of how the prohibition, and exceptions, work in practice is strongly dependent on the specific facts of each case.  The boards of appeal attempt to strike a balance of fairness between the two parties when deciding whether to allow use of the exceptions. 

The prohibition can restrict the rights of a party to defend their case, but it is a relatively rare factual situation for the prohibition to restrict a party's options in a meaningful way.  The prohibition does not apply to requests not allowed by the opposition division, and so they may provide the easiest solution to a problem in this area.  Again, as with other topics we have discussed, having a comprehensive set of requests on file throughout opposition is a good idea.   

As the EPO has no facility for cross-appeals, the simplest solution to avoiding being trapped by the prohibition is to always have an appeal pending when the other party also has an appeal.  However, this brings with it the additional appeal fee cost on a case where the party would not have otherwise appealed.  Whether to file an appeal in such situations is very fact-specific and the details of amendments made in opposition, along with the importance of the case, will guide whether it is worthwhile. 

Next week we will turn to the opponent's grounds of appeal. 

This article is a part of our EPO Practice and Peculiarities series. Click here to explore.