T 0060/91 (Prohibition of reformatio in peius) 05-10-1992

1. In the Board's view T 60/91 and T 96/92 both relate to the same legal problem. Both therefore raise the same point of law (see also point 12, Reasons, below), and consolidation of the two cases for referral of this point of law to the Enlarged Board of Appeal is accordingly warranted. The fact that all the parties involved have given their consent means that the requirements of Article 9(2) of the Rules of Procedure of the Boards of Appeal have been met. Once the Enlarged Board of Appeal has settled this point of law the substantive issues of each case will then be considered in separate proceedings.

2. Under Article 112(1) EPC, a Board of Appeal may refer a question to the Enlarged Board of Appeal if it considers that its decision is required in order to ensure uniform application of the law, or if an important point of law arises.

The Board referring, 3.2.1, considers that the Enlarged Board of Appeal must decide whether it (the Board referring) may go beyond the requests of either appellants I or appellants II to their disadvantage.

3. In the present case the Opposition Division maintained both patents in amended form, i.e. in accordance with the auxiliary request of the patent proprietors in each case, the main requests having been rejected for lack of inventive step.

4. In T 60/91 patent proprietors I filed an admissible appeal requesting that the patent be maintained in the text according to their main request, which had been refused. As shown above, the extent of the protection thus conferred would go beyond that of the version according to the auxiliary request.

For their part, opponents and respondents I requested revocation of the patent.

In the parallel case with which it has been consolidated, T 96/92, on the other hand, the former opponents filed an admissible appeal requesting that the patent be revoked, in response to which patent proprietors II filed a request for the patent to be maintained as granted.

5. Respondents I and II would themselves have been entitled to appeal, as during the opposition proceedings they had requested that the patent be revoked (T 60/91) and maintained as granted (T 96/92). They did not however appeal.

6. The question raised therefore is whether the Board of Appeal may only examine the legal validity of the contested decision to the extent it has been contested in the appeal, or whether it may also rectify the contested decision in accordance with the wishes of the non-appealing party rather than as requested by the appellants. In the present case this would mean that the appellants would not only risk dismissal of their appeal with the contested decision being upheld, but also alteration of the decision to their disadvantage. The appellants would thus forfeit what they had gained at first instance without the respondents themselves having filed an appeal (which would have been subject to a time limit, the payment of costs and the submission of documents). The question is whether this possibility is supported by the EPC.

7. Where the rules of court procedure governing appeals prevent a court of appeal from going beyond the requests of the appealing party and putting it in a worse position than it was in before it appealed, the legal term used in German-speaking countries is "Verschlechterungsverbot", the prohibition of "reformatio in peius" (i.e. the principle whereby a decision may not be reached that would put an appellant in a worse position than he was in under the original decision) (cf. inter alia Fasching H.W., "Lehrbuch des österr. Zivilprozeßrechts", 2nd edn., Vienna 1990, Note 1746, Walder H.-U., "Zivilprozeßrecht", 3rd edn., Zürich 1983, Sec. 39 Note 18).

8. In the Board's view the European Patent Convention contains no clear solution to the point at issue, i.e. no mention is made of a prohibition of reformatio in peius.

Article 125 EPC states that in the absence of procedural provisions in the Convention, the European Patent Office must take into account the principles of procedural law generally recognised in the Contracting States.

A look at the legal position in some of the Contracting States reveals the following situation:

German patent law prohibits "reformatio in peius" in appeal proceedings. The German Patent Law (Patentgesetz - PatG) does not itself contain any express provision to this effect, but in such cases refers to the Code of Civil Procedure (Zivilprozeßordnung - ZPO) (see Sec. 99 PatG). The application of this prohibition is thus based on Secs. 308, 536, 559 ZPO. It does not apply in cases where the Patent Court may also take a decision without a request having been filed, as when ruling on questions of costs (cf. Benkard, "Patentgesetz", 8th edn., Munich 1988, Notes 9, 10 on Sec. 79 PatG, Schulte, "Patentgesetz", 4th edn., Cologne 1987, Note 1 on Sec. 79 PatG).

In France, where the appeals procedure also follows the rules for civil proceedings, the position is comparable, but only subject to certain qualifications; reference is made to the "effet dévolutif" (the effect produced by an appeal of transferring the case to a superior tribunal) (cf. Mathély, "Le nouveau droit français des brevets d'invention", 1991, pp. 556/557, 567; "Nouveau Code de procédure civile", Art. 562, para. 1, and Vincent/Guichard, "Procédure civile", XXIst edn., 1987, Notes 947 et seq., p. 790 et seq.).

Under Swiss law, appeal proceedings follow the rules of the Code of Administrative Procedure (VwVG). Under Article 62 VwVG a "worse outcome" ("Verschlechterung") is possible, but only in a limited number of cases. A court of appeal intending to amend a contested decision to the appellants' disadvantage must notify them of this in advance (Art. 62(3) VwVG). The appellants may then withdraw their appeal, thus terminating proceedings. "Reformatio in peius" is therefore effectively prevented. This does not apply to cases prosecuted ex officio, i.e. in decisions covering costs or compensation for parties (cf. Saladin P., "Das Verwaltungsverfahrensrecht des Bundes", Basle 1979, p. 105/6).

These few examples clearly show that the legal systems of the Contracting States answer the question of how closely appeal courts are bound by appellants' requests either in different ways or by drawing on different legal sources.

9. An examination of the provisions of the EPC in the light of its underlying logic shows that the problem raised touches on a variety of aspects, including the following:

9.1 Lack of a mechanism for filing cross-appeals under the EPC

A cross-appeal in the true meaning of the word can be said to exist where respondents are given a time limit after an appeal has been lodged or after the time limit for appeal has expired to file an appeal of their own. The EPC makes no mention of such a possibility. Where several parties are adversely affected by a decision, each one has the right and the obligation to file an appeal if they wish to have the decision in question changed.

9.2 Res judicata

A decision becomes final unless contested in due time, i.e. within the period allowed for filing an appeal. Were the EPC to provide extraordinary remedies there would be an exception to this principle, but this is not the case.

The decision thus becomes final in that it is not contested. This normally defines the scope of an appellate court for reviewing and rectifying a decision. It could moreover also be argued that by failing to take action the non-appealing party clearly indicates its acceptance of the decision.

If an appeal is filed and held to be allowable in full or in part, the contested decision must be rectified fully or partly in accordance with the appellants' requests. The position may be different in cases where the court of appeal is required to examine the facts of its own motion, or ex officio. Then it may be able to go beyond the appellants' requests. The EPC recognises the principle of ex officio examination where the public interest is involved. This principle contrasts with the concept of "free disposition" whereby the parties initiate and control the conduct of proceedings ("Antragsprinzip" and "Dispositionsmaxim"), and which is an expression of individual autonomy and a party's right to dispose over private rights as he sees fit.

9.3 The principle of party disposition

The Board of Appeal does not intervene of its own motion, but only at the request of the appellants, or as in the present case the two appealing parties, exercising their rights, i.e. their right to appeal.

It is the interests of a party that set proceedings before the European Patent Office in motion, or they are at least the prerequisite for this to happen, and evidence of this principle being applied in terms of procedural law can be found at various points in the EPC, including Articles 58, 94, 99, 106 and 113(2) and Rule 51(4). These provisions represent the application of the principle of "free disposition" in the EPC.

9.4 Ex officio examination

The requirement that account be taken of the public interest, i.e. that the Board of Appeal intervene of its own motion to ascertain the facts ("Untersuchungsmaxim" or principle of judicial investigation), is enshrined in Article 114(1) EPC, which clearly states that the Board shall not be restricted to the applications ("relief sought") of the parties involved. Without doubt this applies to the motions for the admission of evidence. However, bearing in mind the right, which the parties enjoy by derivation from this principle, to introduce new facts and evidence during the appeals procedure, the question then arises as to whether the principle also applies to the actual request formulated in the appeal, i.e. the substantive application concerning the subsistence and extent of the proprietary right. This question is connected to the issues raised by cases G 7/91, G 8/91, G 9/91 and G 10/91 currently pending before the Enlarged Board of Appeal and to which reference is made.

A further provision requiring that the European Patent Office act of its own motion is to be found in the last sentence of Rule 60(2) EPC, which, because of Article 111(1), second sentence, and of Rule 66(1) EPC, can also apply to appeals (cf. in this connection also cases G 7/91 and G 8/91 pending before the Enlarged Board of Appeal). The Contracting States formulated this requirement as a discretionary provision. Consequently, achieving a balance between the public interest and private interests is a matter for the discretion of the European Patent Office through its various departments, which are obliged to exercise this discretion and, in their practice, to define the limits within which they do so for the sake of legal certainty.

Finally it should be pointed out that decisions apportioning the costs of proceedings under Article 104(1) EPC and regarding the reimbursement of appeal fees under Rule 67 EPC are not dependent on a party having submitted a request.

9.5 Other restrictions on the principle of "free disposition"

The principle of "free disposition" is not only restricted by the provisions in which the principle of ex officio examination is enshrined, but also by provisions such as Article 94(2) EPC, last sentence, where the applicant's power of disposal over an application and the resulting rights are restricted in that the request for examination may not be withdrawn.

The other provisions of the EPC which were likewise drafted with the public interest in mind, such as Articles 99 et seq. concerning the opposition procedure and Article 115 governing observations by third parties, also represent institutional restrictions on the freedom of disposition of the applicant or the patent proprietor. The question is whether and to what extent conclusions can be drawn from them with regard to the position under procedural law of the parties to opposition and appeal proceedings.

10. Previous Board of Appeal rulings

In decisions T 565/88, T 556/89 and T 24/88 Boards of Appeal maintained the patent as granted contrary to the request filed by the appellants and former opponents. However the amendments approved by the Opposition Division were found to be merely superfluous and of no significance in terms of the actual content.

In T 369/91 of 15 May 1992 Board of Appeal 3.3.1 expressly stated that if an opponent appeals against the Opposition Division's decision to maintain the patent in amended form in accordance with the patent proprietor's auxiliary request, such an appeal for revocation of the patent renders a counterclaim by the patent proprietor for the patent to be maintained as granted inadmissible because it is the request formulated in the appeal submission that determines the subject-matter of the appeal proceedings.

In T 576/89 of 29 April 1992 Board of Appeal 3.3.3 was likewise called upon to rule on an appeal by the opponents against an "interlocutory decision" delivered by the Opposition Division maintaining a patent in amended form, i.e. the extent of the protection conferred had been reduced. The appellants requested the revocation of the patent. The patent proprietors cross- appealed, requesting that the patent be maintained as granted. The cross-appeal was held to be admissible on account of Article 114(1) EPC.

This decision confirmed what had already been said in T 123/85 (OJ EPO 1989, 336, Reasons 3.1.1), that a decision could only be taken to revert to the text as it stood when the patent was granted if this did not represent an abuse of procedural law. When such an abuse could be said to have occurred was not explained.

Decisions T 123/85 and T 576/89 thus contradict T 369/91.

11. In view of the above the two conditions of Article 112(1)(a) EPC for referring a matter to the Enlarged Board of Appeal have been met. The issue raised is an important point of law as it touches both on the rights of parties in appeal proceedings and the powers of the Boards of Appeal. Given that previous rulings have produced contradictory decisions it is also a question of ensuring uniform application of the law.

12. The question formulated below arises in two cases, both of which have to do with appeals against decisions of the Opposition Division maintaining a patent in amended form. Another shared feature is that in both cases only one appeal was filed, i.e. in neither case did the respondents respond with their own, independent appeal. In one case (T 60/91) the patent proprietors are the appellants, and this raises the question of whether the contested decision can be altered to the disadvantage of the patent proprietors, while in the other (T 96/92) the opponents are the appellants, the question being whether the decision can be altered to the disadvantage of the opponents. As the two appeals complement each other in that they both feature variations on the same theme and raise the same point of law they are being referred in consolidated proceedings (see point 1 above). Finally this question is closely related to that of whether the Board of Appeal may go beyond the requests of an appellant even when it rules in his favour, or whether here too the principle of party disposition applies.