T 527/17 shows what appears reasonable and advisable in matters of deletion of claims.
In T 527/17 the board admitted the main and the second request but not the first auxiliary request.
Both the main and the second request result from the deletion of claims 7 to 9 (main request) and 6 to 9 (second auxiliary request) from auxiliary request 9A filed with the statement of grounds of appeal
The board held that these amendments do not change the patent proprietor’s case as put forward in its statement of grounds of appeal: they do not raise any new issue and stay within the legal and factual framework established at the outset of the appeal proceedings for the claims remaining on file.
Therefore, Art 13(2) RPBA20 is not applicable to these requests.
By contrast, the insertion of the feature from the description “1-3 days” into claim 6 of the first auxiliary request raises new issues.
For instance, it requires assessing whether the combination of features “1-3 days” and “autologous” was disclosed in the application as filed. Hence, the first auxiliary request changes the proprietor’s case.
The board noted that because claim 6 was not directed to a therapeutic method but to a method of obtaining MDCs, the issue had to be discussed under inventive step rather than sufficiency.
Hence, there were no exceptional reasons within the meaning of Art 13(2) RPBA20 justifying the filing of the first auxiliary request at oral proceedings.
The mere deletion of claims in requests should be admitted even in appeal. It does not change the legal and factual framework of the appeal procedure and improves the procedural economy.
Should a request in which claims have been deleted but other claims have been amended, then the question of admissibility is to be raised.
Even if at a pinch such a request could be admitted under Art 13(2) RPBA20, the fact that new objections have to be raised would render them not admissible under Art 13(1) RPBA20.
See for instance T 824/18 or T 1786/16.
It is difficult to see why the boards should not act this way and cling to a very literal interpretation of Art 13(2) RPBA20. The boards have the discretion to do so. If not the EBA could and should help.
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