EPO: Reformatio in Peius Survives Procedural Violation in T 1168/24

• The EPO Board of Appeal case T 1168/24 concerned a patent for lipid nanoparticle (LNP) technology, vital for COVID-19 vaccines.
• Moderna opposed the patent, which underwent two rounds of opposition and two appeals.
• The patent was ultimately revoked on the grounds of added matter, a key principle in EU patent law.
• The decision clarified that the `reformatio in peius` principle can withstand procedural violations in EPO appeal proceedings.
• This ruling offers important guidance for patent litigators on strategies involving patent amendments and procedural challenges.

The decision confirmed that the principle of `reformatio in peius` can indeed "survive" even when a procedural violation has occurred.

The European Patent Office (EPO) Board of Appeal case T 1168/24 centered on a patent covering lipid nanoparticle (LNP) technology, a critical component in the development of COVID-19 vaccines. This technology has been the subject of significant global litigation, reflecting its immense importance in modern pharmaceutical advancements. The specific patent under scrutiny faced opposition from a major pharmaceutical entity, namely Moderna.

The journey of this patent through the EPO system was protracted and complex. It involved two distinct rounds of opposition proceedings, where the validity of the patent was challenged by the opposing parties. Following these initial stages, the case proceeded through two subsequent appeal processes, indicating the high stakes and persistent disputes surrounding the LNP innovation. Ultimately, after this extensive legal scrutiny, the patent was revoked. The grounds for this revocation were determined to be "added matter," a fundamental principle in European patent law that prohibits the introduction of new technical information into a patent application or patent after its initial filing date.

Beyond the specific technological and commercial implications of the LNP patent, the T 1168/24 decision also provided crucial insights into procedural aspects of European patent law, particularly concerning the principle of `reformatio in peius`. This Latin legal term, meaning "change for the worse," refers to the prohibition against an appeal body rendering a decision that is more unfavorable to the appellant than the decision being appealed, in the absence of a cross-appeal from the other party. The application of this principle is a cornerstone of fairness in appellate proceedings at the EPO.

A key aspect clarified by the Board of Appeal in T 1168/24 involved the interplay between `reformatio in peius` and instances of procedural violation. The decision confirmed that the principle of `reformatio in peius` can indeed "survive" even when a procedural violation has occurred. This outcome is significant for understanding the boundaries and robustness of this protective principle within the EPO's appeal framework, particularly when procedural irregularities are identified during the course of a patent appeal. The ruling underscores the EPO's approach to balancing procedural correctness with the fundamental rights of appellants.

The revocation of a patent for added matter, especially one pertaining to such a high-profile and economically significant technology like lipid nanoparticles, serves as a potent reminder of the strict requirements for patent drafting and amendment under EU patent law. The finding of added matter indicates that the scope of protection was impermissibly broadened or altered during the patent's prosecution or opposition phases, highlighting a critical vulnerability for patent holders. This aspect of the decision reinforces the need for meticulous attention to detail in all stages of the patent lifecycle.

Furthermore, the clarification provided by T 1168/24 regarding `reformatio in peius` in the context of procedural violations offers valuable guidance for patent litigators. Understanding that `reformatio in peius` can withstand certain procedural issues is vital for strategizing in future opposition and appeal cases. This decision impacts how parties might approach amendments to patent claims and specifications, as well as how they might challenge or defend against procedural irregularities, ensuring that the strategic application of `reformatio in peius` remains a central consideration in EPO appeal proceedings. This ruling contributes to the evolving jurisprudence surrounding `EPO reformatio in peius procedural violation` and its practical application.

Patent litigators should note this decision clarifies the application of reformatio in peius in EPO appeal proceedings, particularly concerning procedural violations, which could impact strategy for future opposition and appeal cases involving patent amendments.

Source: Original reporting based on legal analysis of T 1168/24.