Applying G 1/99 After Remittal: T 1168/24 on the Prohibition of Reformatio in Peius
The Board of Appeal clarifies that a remittal for a violation of the right to be heard does not disapply the prohibition of reformatio in peius, and rejects multiple selections for lipid formulations under Article 123(2) EPC.
The principle of the prohibition of reformatio in peius applies to opposition proceedings following a remittal for a substantial procedural violation, unless the violation undermines the legitimacy of the entire earlier decision making process.
Why did the proprietor argue that the prohibition of reformatio in peius should not apply?
In the first appeal proceedings (T 0505/20), the Board set aside the opposition division's decision due to a violation of the right to be heard and remitted the case. During the second opposition proceedings, the proprietor sought to introduce broader claims. The opposition division rejected these requests under the principle of the prohibition of reformatio in peius (PRP).
The proprietor appealed, arguing that PRP should not apply after a remittal for a substantial procedural violation. They relied on an exception recognised in T 0727/19 and further argued that the admission of a new experimental report (D38) changed the factual basis of the proceedings, which would justify an exception under G 1/99.
How does a violation of the right to be heard affect the application of G 1/99?
The Board in T 1168/24 rejected both arguments. First, it distinguished the present procedural violation from the one in T 0727/19. That earlier case involved an objectively justified suspicion of partiality on the part of the opposition division. A finding of partiality undermines the legitimacy of the entire earlier decision making process and justifies an exceptional departure from PRP (reasons 20). In contrast, a violation of the right to be heard is serious but does not have this total vitiating effect.
Second, the admission of D38 did not change the factual basis of the proceedings. The experimental report merely confirmed the opposition division's earlier conclusions without introducing new lines of attack. Crucially, the proprietor made no attempt to file restricted claims first. The Board noted that a proprietor must attempt to comply with PRP by introducing originally disclosed features that limit the scope before seeking broader claims (reasons 29). Because the proprietor failed to follow this sequence, the conditions of G 1/99 were not met.
Why did the Board find the lipid formulation amendments to add matter?
Moving to the substantive allowability of Auxiliary Request 13, the Board assessed whether amending the upper limit of the cationic lipid to 65 mol % and defining the non-cationic lipid as a specific mixture of phospholipid and cholesterol offended Article 123(2) EPC.
The proprietor argued that the 1:57 formulation in the examples provided a pointer to the specific mixture. The Board disagreed. The application presented the 1:57 and 1:62 formulations as equally preferred and showed they had comparable in vivo activity. The 1:57 formulation was not disclosed as the most efficacious formulation for in vivo use (reasons 88). Similarly, selecting the 50 to 65 mol % range for the cationic lipid from paragraph [0113] constituted an arbitrary selection from a non-converging list of alternatives. The Board concluded that at least two independent arbitrary selections are required to arrive at the claimed combination of features (reasons 111), leading to the revocation of the patent.
What must practitioners consider when amending claims after a procedural remittal?
Do not assume a clean slate. A remittal for a substantial procedural violation does not automatically disapply the prohibition of reformatio in peius. Unless the violation involves partiality that taints the entire first-instance process, the opponent's protection against a worse outcome remains intact.
When attempting to invoke an exception under G 1/99, proprietors must strictly follow the required sequence: first attempt to limit the claims, then extend within Article 123(3) EPC limits, and only then delete the inadmissible amendment. Furthermore, when defending against added matter attacks, relying on a specific example to provide a pointer requires that the example be explicitly preferred in the application as filed. Merely being one of several equally tested alternatives is insufficient to justify a selection.