EP 2 900 191 B1 relates to a disposable absorbent article with extensive and retractable core.
Brief outline of the case
Claim 1 as granted infringed Art 123(2). The patent was maintained according to AR1.
Both proprietor and opponent appealed.
The board confirmed that claim 1 as granted infringed Art 123(2). The same applied to AR1 to16, 2bis to16bis, 1tris to16tris. The board did thus consider that the patent could not be maintained according to AR1.
AR1quater to 4quater were not admitted under Art 13(2) RPBA.
The patent was thus revoked.
We will concentrate on AR1quater to 4quater.
A request for a referral to the EBA from the proprietor was refused.
The opponent’s point of view on AR1quater to 4quater
These requests should not be admitted. The deletion of claims was to be regarded as an amendment. The added-matter objection had already been raised in writing during the opposition procedure and so could not have taken the proprietor by surprise.
The AR thus should have been presented as part of its complete appeal case. An unfavourable preliminary opinion did not amount to exceptional circumstances justifying the admittance of these requests. Hence, the late filing was not excused.
These requests both resulted in a re-weighting of the case and a disproportionate shift in focus for the board and the opponent as different features in different claims would need to be discussed.
This would be unfair for the opponent as it was not foreseeable that these requests would be filed at such a late stage despite the objection being on file before.
The proprietor’s point of view on AR1quater to 4quater
These requests should be admitted. The deletion of claims 1 to 12 of the former requests in each request simplified the number of issues to be discussed.
The remaining claims in these requests had been discussed in detail by both parties in their written submissions such that no new burden resulted from the filing of the new requests.
The objection under Art 100(c) relating to the omission of the multiple contraction regions was only briefly mentioned in the grounds of appeal and the board’s preliminary opinion in this regard was totally unexpected.
This amounted to exceptional circumstances supporting the admittance of these new requests. Exceptional circumstances could be of a legal nature.
T 1800/21 and T 2295/19 supported the admittance of new AR under similar circumstances. The new requests did not result in a re-weighting of the case, did not change the legal and factual framework of the proceedings and had no impact on procedural economy. Despite the differences in the features, the prior art was identical and it did not make any sense to file so many requests.
In view of diverging decisions relating to deletion of claims from a request, should the board not admit these requests, a referral to the EBA should be made.
The proprietor was further of the opinion that the opponent must anyway prepare for everything.
The board’s decision on AR1quater to 4quater
In the case law of the boards, different approaches have been taken regarding the question of whether the deletion of a claim category, of dependent claims or of alternatives within a claim of a request is always to be regarded as an amendment, or whether an amendment is only recognised if the deletions change the legal and factual framework of the appeal.
The board referred to the CLBA, 10th edition, V.A.4.2.2 d, and particularly T 494/18, reasons 1.3.1). However both approaches nonetheless come to the same conclusion, i.e. that a deletion is an amendment of the proprietor’s appeal case if it changes the factual and legal framework of the appeal.
Some of the criteria for assessing whether the legal and factual framework has changed correspond to those that are applied to decide whether the amendment is justified by exceptional circumstances, The board quoted corresponding decisions.
Quoting some further decisions, the board noted that the claims remaining after the deletion could lead to the following situations as far as the matters at issue are concerned:
- they need to be thoroughly re-weighted
- had been discussed exhaustively in writing;
- showed modifications such that a fresh discussion of novelty and inventive step would be required;
- had been discussed in the preliminary opinion of the board;
- raised new issues;
- limited the issues to be discussed.
The board concluded that, irrespective of which approach is followed, amended AR 1quater to 4quater are to be regarded as an amendment of the proprietor’s appeal case pursuant to Art 13(2) RPBA.
Even if the deletion of certain claims from a claim set were not regarded as an amendment per se, applying the criteria as set out above, the board held that, in the present case, the deletion of claims 1 to 12 in AR 1 to 4 indeed changed the factual and legal framework of the appeal.
This is because, due to the deletion, the consideration of these requests would change the discussion from Art 123(2) to Art 54 and 56 which would in view of the modified wording of the remaining claim 1 in AR 1quater to 4quater and the numerous attacks raised by the opponent entail thoroughly re-evaluating the matters at issue, i.e. change the focus of the proceedings.
For assessing the new requests, the specific differences between the subject-matter of the respective claim 1 of the higher ranking AR and claim 1 of the late-filed AR 1quater to 4quater would need to be established first. Subsequently, in view of these specific differences, a new discussion concerning novelty and inventive step would be necessary.
Contrary to the proprietor’s assumption, the amended requests would not have facilitated or shortened the matters to be discussed. Rather, they would have required an additional assessment that had not been necessary for the higher-ranking requests after the board had concluded in the OP that these contravened Art 123(2).
An additional aspect supporting the deletion to be regarded as an amendment in view of the specific circumstances of the case, is the requirement to present the complete appeal case at the beginning of the appeal proceedings according to Art 12(3) RPBA.
Even if a preliminary opinion in the communication is just provisional, such that preparation of the remaining issues by the board is still required, its purpose to focus the discussion on the essential issues would become devalued if the proprietor were allowed to change the focus at any time of its own volition by deleting the claims under discussion and shifting attention to the remaining claims.
This also holds true for the opponent’s preparation of the OP which is based on the requests on file such that the opponent might decide to focus on specific issues according to its own evaluation of the probability of a potential change in the board’s preliminary opinion. The proprietor’s allegation that the opponent must anyway prepare for everything, ignores this legitimate interest of the opponent.
Comments
Change of legal and factual framework
One key message from the present decision is that the deletion of claims offending Art 123(2) changes the legal and factual framework of the appeal proceedings as the discussion would shift from Art 123(2) to Art 54 and 56, when Art 54 and 56 were never discussed before.
If Art 54 and 56 have been discussed beforehand for the remaining claims, the deletion of claims offending Art 123(2) is not changing the legal and factual framework of the appeal.
In the present situation, it has to be agreed with the board, that the amended requests would not have facilitated or shortened the matters to be discussed.
In view of the specific situation, a referral to the EBA was indeed unnecessary.
Divergent case law in matters of deletion of claims
It remains that the case law on the admissibility of requests in which some claims are deleted is divergent. The topic of deletion of claims has been the subject of many entries on the present blog.
Some boards do not consider the deletion as a as an “amendment to the party’s appeal case” if the deletion does not change the legal and factual framework of the appeal.
Other boards have taken the position that the deletion of such claims or alternatives in claims have indeed to be regarded as an “amendment to the party’s appeal case“.
Some further boards held that, in spite of considering such requests as an “amendment to the party’s appeal case“, they were admitted as they were not detrimental to procedural economy.
Some other boards held that due to the mere fact that such requests were considered as an amendment to a party‘s case, they were not admitted even if they could be considered as not detrimental to procedural economy.
One decision seems particularly relevant when it comes to deletion of claims: T 2295/19, which has been quoted a few times in the present decision. In T 2295/19, the board took the bother to go through a lot of case law on this topic and even consulted the „travaux preparatoires” to Art 114(2).
Some guidance by the EBA on the matter of deletion of claims would be useful.
The same would apply to the grouping of claims for which the case law on admissibility is also divergent.
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