Reformatio in peius

Last updated

A reformatio in peius (Latin: "change for the worse") occurs in law when as the result of an appeal, the appellant is put in a worse position than if there had been no appeal. For example, an appellant in a criminal case might receive a more severe sentence on appeal than in their original trial.

Contents

Whether or not reformationes in peius are allowed depends on the jurisdiction and the applicable procedural law. In civil law jurisdictions, reformationes in peius are generally not allowed in appeals in administrative law cases and in criminal and civil appeals if the “other” party, i.e. the state in a criminal case, appeals the decision.[ citation needed ] Thus, a defendant needs never fear appeal an unjust conviction, such as a guilty verdict; a negative shift, such as a more severe penalty, can only result from the prosecution appealing it (as well).

Prohibition at European Patent Office

Under the case law of the Boards of Appeal of the European Patent Office (EPO), a board cannot put a sole appellant in a worse position than if there had been no appeal of the first instance decision. In relation to appeals, the term "prohibition of reformatio in peius" thus essentially means that a person should not be placed in a worse position as a result of filing an appeal. Thus, in general, EPO Boards of Appeal are prevented in opposition appeal proceedings from going beyond the request of a sole appellant to put it in a worse position than before the appeal. [1] The central case detailing the principle is G 4/93, consolidated with G 9/92.

The principle, however, has exceptions, as laid out for example in decision G 1/99. In that case, an error of judgement had been made by an Opposition Division in allowing the addition of a limiting feature going beyond the content of the application as filed (contrary to Article 123(2) EPC). The board allowed the patent proprietor to file requests to overcome the deficiency since

(...) it would be inequitable for the patent proprietor not to be given a fair opportunity to mitigate the consequences of errors of judgement made by the Opposition Division. [2]

Still under the case law of the Boards of Appeal of the EPO, the doctrine of reformatio in peius does not, however, apply separately to each point or issue decided or to the reasoning leading to the impugned decision. [3]

See also

Related Research Articles

The patentability of software, computer programs and computer-implemented inventions under the European Patent Convention (EPC) is the extent to which subject matter in these fields is patentable under the Convention on the Grant of European Patents of October 5, 1973. The subject also includes the question of whether European patents granted by the European Patent Office (EPO) in these fields (sometimes called "software patents") are regarded as valid by national courts.

<span class="mw-page-title-main">European Patent Convention</span> International patent treaty

The European Patent Convention (EPC), also known as the Convention on the Grant of European Patents of 5 October 1973, is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted. The term European patent is used to refer to patents granted under the European Patent Convention. However, a European patent is not a unitary right, but a group of essentially independent nationally enforceable, nationally revocable patents, subject to central revocation or narrowing as a group pursuant to two types of unified, post-grant procedures: a time-limited opposition procedure, which can be initiated by any person except the patent proprietor, and limitation and revocation procedures, which can be initiated by the patent proprietor only.

The European Patent Convention (EPC), the multilateral treaty instituting the legal system according to which European patents are granted, contains provisions allowing a party to appeal a decision issued by a first instance department of the European Patent Office (EPO). For instance, a decision of an Examining Division refusing to grant a European patent application may be appealed by the applicant. The appeal procedure before the European Patent Office is under the responsibility of its Boards of Appeal, which are institutionally independent within the EPO.

The opposition procedure before the European Patent Office (EPO) is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed. European patents granted by the EPO under the European Patent Convention (EPC) may be opposed by any person from the public. This happens often when some prior art was not found during the grant procedure, but was only known by third parties.

G 1/03 and G 2/03 are two decisions of the Enlarged Board of Appeal of the European Patent Office (EPO), which were both issued on April 8, 2004.

Double patenting is the granting of two patents for a single invention, to the same proprietor and in the same country or countries. According to the European Patent Office, it is an accepted principle in most patent systems that two patents cannot be granted to the same applicant for one invention. However, the threshold for double patenting varies from jurisdiction to jurisdiction.

<i>Aerotel Ltd v Telco Holdings Ltd</i>

Aerotel v Telco and Macrossan's Application is a judgment by the Court of Appeal of England and Wales. The judgment was passed down on 27 October 2006 and relates to two different appeals from decisions of the High Court. The first case involved GB 2171877 granted to Aerotel Ltd and their infringement action against Telco Holdings Ltd and others. The second case concerned GB application 2388937 filed by Neal Macrossan but refused by the UK Patent Office.

<span class="mw-page-title-main">Grant procedure before the European Patent Office</span>

The grant procedure before the European Patent Office (EPO) is an ex parte, administrative procedure, which includes the filing of a European patent application, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the grant of a patent, or the refusal of the application, in accordance with the legal provisions of the European Patent Convention (EPC). The grant procedure is carried out by the EPO under the supervision of the Administrative Council of the European Patent Organisation. The patents granted in accordance with the EPC are called European patents.

G 1/84 is a decision of the Enlarged Board of Appeal of the European Patent Office (EPO), which was issued on July 24, 1985. The Board held in this decision that:

In European patent law, the limitation and revocation procedures before the European Patent Office (EPO) are post-grant, ex parte, administrative procedures allowing any European patent to be centrally limited by an amendment of the claims or revoked, respectively. These two procedures were introduced in the recently revised text of the European Patent Convention (EPC), i.e. the so-called EPC 2000, which entered into force on 13 December 2007.

Article 123 of the European Patent Convention (EPC) relates to the amendments under the EPC, i.e. the amendments to a European patent application or patent, and notably the conditions under which they are allowable. In particular, Article 123(2) EPC prohibits adding subject-matter beyond the content of the application as filed, while Article 123(3) EPC prohibits an extension of the scope of protection by amendment after grant.

Article 83 of the European Patent Convention (EPC) relates to the disclosure of the invention under the European Patent Convention. This legal provision prescribes that a European patent application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

The restitutio in integrum or re-establishment of rights under the European Patent Convention (EPC) is a means of redress available to an applicant or patent proprietor who has failed to meet a time limit in spite of exercising "all due care required by the circumstances". The legal basis for this means of redress is provided in Article 122 EPC. If the request for restitutio in integrum is accepted, the applicant or patentee is re-established in its rights, as if the time limit had been duly met.

Under the European Patent Convention (EPC), a petition for review is a request to the Enlarged Board of Appeal of the European Patent Office (EPO) to review a decision of a board of appeal. The procedure was introduced in Article 112a EPC when the EPC was revised in 2000, to form the so-called "EPC 2000". A petition for review can essentially only be based on a fundamental procedural defect. Its purpose is not to obtain a reconsideration of the application of substantive law, such as points relating to patentability. The petition is a restricted form of judicial review, limited to examining serious errors of procedure which might have been committed by the Legal or Technical Boards of Appeal, prejudicing the right to a fair hearing of one or more appellants. Before the entry into force of the EPC 2000 in December 2007, it was not possible for a party who did not have his requests granted in an appeal to challenge the final decision of the Legal or Technical Board of Appeal on any grounds.

Art. 23 1/15, Art. 23 2/15 and Art. 23 1/16 are three related cases decided by the Enlarged Board of Appeal of the European Patent Office concerning the removal from office of Patrick Corcoran, a member of the Boards of Appeal, who had been previously suspended by the Administrative Council of the European Patent Organisation. According to Article 23(1) EPC, members of the Boards of Appeal may only be removed from office by the Administrative Council on a proposal from the Enlarged Board of Appeal. Two cases were successively initiated by the Administrative Council, but the Enlarged Board eventually dismissed both of them. In the third case initiated by the Administrative Council, the Enlarged Board decided not to propose the removal from office of Corcoran.

G 1/21 is a decision issued on 16 July 2021 by the Enlarged Board of Appeal of the European Patent Office (EPO) regarding the legality of holding oral proceedings at the EPO by videoconference without the consent of the parties. Namely, the Enlarged Board of Appeal held that "[d]uring a general emergency impairing the parties' possibilities to attend in-person oral proceedings at the EPO premises, the conduct of oral proceedings before the boards of appeal in the form of a videoconference is compatible with the EPC even if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference." The reasoning in the written decision further indicates that, if a party so requests, oral proceedings must be held in person at the EPO premises, except in absolutely exceptional cases.

G 1/10 is a decision issued on 23 July 2012 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that Rule 140 EPC cannot be used to request corrections of the text of a European patent.

G 1/12 is a decision issued on 30 April 2014 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that an appellant's identity in a notice of appeal can be corrected under Rule 101(2) EPC, provided the requirements of Rule 101(1) EPC are met. The Enlarged Board of Appeal also held that an appellant's identity can be corrected under Rule 139 EPC, first sentence, under the conditions established by the case law of the Boards of Appeal.

G 1/13 is a decision issued on 25 November 2014 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that in opposition proceedings a retroactive effect of a restoration of a company must be recognised by the EPO. In other words, a restoration of a company has retroactive effect before the EPO when it has such retroactive effect under national law.

References

  1. ↑ Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (9th edition, July 2019), v.a.3.1 "Binding effect of requests - no reformatio in peius".
  2. ↑ Decision of the Enlarged Board of Appeal dated 2 April 2001, G 1/99, reasons 14.
  3. ↑ "According to the established case law of the boards of appeal, the doctrine of reformatio in peius does not apply separately to each point or issue decided, or to the reasoning leading to the impugned decision (see T 149/02 of 25 July 2003, point 3.2.1)." in EPO Board of Appeal decision T 0384/08 of 26 June 2009, Reasons 2.
This page is based on this Wikipedia article
Text is available under the CC BY-SA 4.0 license; additional terms may apply.
Images, videos and audio are available under their respective licenses.