The patent relates to an optically variable security element and a method of manufacturing it.
Brief outline of the case
In reply to an opposition, the proprietor filed a new MR consisting of a plurality of independent claims.
The new MR was lacking N over D1=EP 2 727 742
The OD decided maintenance according to AR1, also consisting of a plurality of independent claims.
The opponent appealed.
The board confirmed the maintenance according to AR1 which was the MR in appeal.
The case is interesting in that the dealt with the replacement of a granted independent claim by several independent claims.
The opponent’s point of view
The opponent was of the opinion that the MR did not fulfil the requirements of R 80, since the granted independent claim 1 was replaced by several independent claims in the opposition proceedings.
The board’s decision
The board essentially followed the reasoning of T 263/05, in particular the approach that compatibility with R 80 requires an assessment in each individual case and cannot be answered in general terms.
The board was unable to derive any requirements from R 80 as to the manner in which or with which amendments a proprietor intends to overcome a ground for opposition.
Amendments which are necessary and expedient to overcome a ground for opposition can be regarded as “occasioned” within the meaning of R 80.
If the ground for opposition concerns an independent claim, R 80 does not, in the board’s view, preclude amendments replacing it with two or more independent claims, provided that their subject-matter is limited or amended in comparison with the granted claim.
It appears legitimate for a proprietor to attempt to cover parts of the granted independent claim by means of two or more independent claims in order to overcome a ground for opposition.
However, a limit should be drawn if such a procedure of replacing an independent claim appears to be an attempt to continue the grant procedure or otherwise an abuse of procedure.
Whether a set of claims amended in this way actually overcomes the ground for opposition and, moreover, satisfies the other requirements of the EPC, in particular Art 84 and 123(2) and (3) EPC, are questions which must be answered separately from compatibility with R 80.
In the present case, the amendments were not objectionable under R 80.
Independent claim 1 as granted was replaced by independent claims 1, 2, 3 and 4 and independent claim 14 as granted was deleted in reply to grounds of opposition and to further objections raised by the OD.
Each of these four independent claims contains further limiting features compared to claim 1 as granted. They essentially represent combinations of the granted independent claim 1 with claims dependent on it, whereby the addition in claim 3 originating from the description defines a feature from the granted claim 8 in more detail.
The opponent has not asserted an abuse of process and the board is unable to recognise any.
Comments
It should be reminded that unity of invention is not a requirement to be fulfilled when a patent is maintained, cf. G 1/91, OJ 1992, 253.
Replacing an independent claim by a plurality of limited dependent claims is thus perfectly acceptable.
Provided the plurality of independent claims answers a ground of opposition, even not raised by the opponent, nothing prevents a proprietor to attempt to cover parts of the granted independent claim by means of two or more independent claims.
The limit is to be drawn when replacing an independent claim appears to be an attempt to continue the grant procedure or otherwise an abuse of procedure.
One example could be to file a slightly amended independent claim 1 and adding a dependent claim relating to an embodiment which was not claimed during examination.
Adding in opposition a dependent claim relating to an embodiment which was not claimed during examination to the claims as granted, is a clear breach of R 80.
Conciseness and clarity of the amended claims could however play a role.
On the procedure
The ESR mentioned documents with the following references 1X,A-1X- 2A.
The patent is classified in B42D 15/00 and the search was carried out in B 42D and B 41M.
D1=EP 2 727 742 was not mentioned in the ESR and bears the following classification units: B42D 25/00, B42D 25/29 and B42D 25/355.
https://www.epo.org/de/boards-of-appeal/decisions/t220431du1
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