Wednesday, February 26, 2020 T 2063/15 - Amendment not occasioned by a ground for opposition

Rule 80 EPC stipulates that amendments to the claims of a granted patent may be made provided that these are occasioned by a ground for opposition. In the present opposition appeal case, the main request and Auxiliary request 1 were not allowed for lack of novelty and lack of clarity, respectively. The subsequent Auxiliary request 2 and Auxiliary request 3 both contained an additional independent claim (i.e., claim 2).

Claims 1 and 2 of auxiliary request 2 were based on combinations of claims 1 and 2 and claims 1 and 9 as granted respectively. The Board considered Auxiliary request 2 not to violate Rule 80 EPC, since granted claims 2 and 9 were each separately dependent upon granted claim 1, found not to be novel; thus, the amendments made to the claims in auxiliary request 2 were occasioned by a ground for opposition. Regardless, Auxiliary request 2 was considered to lack novelty.

In auxiliary request 3, claim 1 was based on a combination of claims 1 and 2 as granted and additional features taken from the description. Claim 2 was the same as in the preceding request. The Board found that the inclusion of the additional independent claim 1, based on claims 1 and 2 as granted in combination with features taken from the description, was no longer simply occasioned by a ground for opposition since this ground was already addressed through the filing of independent claim 2. Accordingly, the amendments made to the claims were deemed not occasioned by a ground for opposition contrary to the requirement of Rule 80 EPC. Auxiliary request 3 was therefore not allowable.

Friday, March 23, 2018 T 1719/13 - Live with your untidiness

In this opposition appeal, both the proprietor and the opponent appealed the decision of the Opposition Division to maintain the patent in amended form. Besides the main request of maintaining the patent as granted, the proprietor filed a 2nd auxiliary request corresponding to the request held allowable by the OD, although did not specifically mention in the grounds of appeal that these requests were the same. The proprietor's 1st auxiliary request was identical to his 2nd, except for the addition of a new dependent claim 5, which was added to establish identical dependency as in the underlying PCT application.

The Board did not admit the1st auxiliary request into the proceedings, since the amendment was not occasioned by the impugned decision or by a new objection raised by the opponent. Rather, the request was viewed by the Board as an attempt to tidy up the allowable claim set and thus not admissible under Art. 12(4) RPBA.

The Board further observed that for admissibility under Art. 12(4), compliance with Rule 80 EPC is not the decisive factor.

The opponent attempted to argue that the proprietor's 2nd auxiliary request was inadmissible because it was not readily apparent from the proprietor's written submissions that the request corresponded to the request allowed by the OD, in contravention of Art. 12(2) RPBA. The Board held that there is no requirement under this article to indicate in the grounds of appeal that a claim request has already been submitted in the first-instance proceedings.

The 2nd auxiliary request was found admissible and was allowed.