Today 29.04.2022 (after the first post on this topic) my attention has been brought up to a newly published decision T 317/20, itself quoting an older decision T 482/19.
The Board confirmed the decision of the opposition division that the main request (patent as granted) does not comply with Art 123 (2)
AR 1, 2, and 4-11 also contravened the requirements of Art 123(2).
The question centres on the admissibility of AR 12 and 13
The Board did not admit AR 12 and 13 into the appeal procedure.
AR 12 is based on the claims as granted, wherein the product claims have been deleted.
AR 13 is based on the claims of AR 2, wherein the product claims have been deleted.
Both requests were filed after the parties had been summoned to oral proceedings.
The proprietor argued that the amendments in AR 12 and 13 would not be an amendment to the case as they contained no new subject-matter. Therefore Art 13 RPBA would not be applicable.
The method claims were part of the granted patent. The opponents did not raise particular objections to the method claim, but only referred to the objections raised in view of the product claim.
The fact that the opponents failed to attack all independent claims properly at an earlier stage of the procedure could not be used to the detriment of the patent proprietor.
The board held that the attacks against the product claims were on the table since the beginning of the opposition procedure and since the beginning of the appeal procedure. Thus, an AR with the method claim as sole independent claim should have been filed earlier. The late filing was not occasioned by a submission of the opponents or by the preliminary opinion of the Board.
The patent was thus revoked.
AR 11, 17, 18 and 19 filed after the receipt of the summons are identical to auxiliary requests 11, 17, 18 and 19 filed with the statement of grounds of appeal, except for the deletion of claims 7 and 8 from auxiliary requests 11, 18 and 19 and claims 6 and 7 from auxiliary request 17.
The wording of the deleted claims is identical to that of claims 12 and 13 as granted, whereby the opposition division considered that claims 12 and 13 as granted infringed Art 123(2) and 76(1).
The admissibility of the new AR was thus to be assessed under Art 13(2) RPBA20 as they represented an amendment to a party’s case.
The proprietor argued twofold that
- the amendment was a direct response to the board’s preliminary opinion that claims 8 and 9 of the main request contained subject-matter that extended beyond the content of the (earlier) application;
- the amendment improved procedural economy without changing the factual situation. This latter circumstance was similar to those underlying decisions T 1480/16 and T 995/18 where the entrusted boards had admitted newly filed requests resulting from the deletion of claims.
The board disagreed and dismissed both lines of argumentation.
The board noted first that in the opposition proceedings, an objection under Art 100(c) had been raised against claims 12 and 13 as granted and the OD found that claims 12 and 13 as granted related to subject-matter which extended beyond the disclosure of the application and the earlier application as filed.
In fact, the proprietor’s appeal was on this issue only.
The proprietor had to expect that the board might uphold the opposition division’s decision.
No exceptional circumstances pursuant to Art 13(2) RPBA20 was therefore to be seen.
Furthermore, the board was also not persuaded by the proprietor’s second line of argument that the deletion of two claims from the claim requests improved procedural economy without changing the factual situation.
For the board, the deletion of the claims resulted in sets of claims covering subject-matter which had not been decisive prior to the filing of the new auxiliary requests.
As a consequence of the deletion of two claims, the other parties and the board were confronted with a new line of defence which had not been part of the proprietor’s original appeal case.
The board also considered that the case at hand was more like T 482/19 and not like T 1480/16 or T 995/18.
The patent was revoked.
Further to my previous comments, it is difficult to see why the deletion of objected claims does not improve procedural economy.
When objected claims are deleted it is difficult to understand that the other parties and the board is faced with a surprising new line of defence.
It looks rather like a petty application of Art 13(2) RPBA20.
It also appears that the question of late filed requests in which claims are deleted should be subject to a referral to the Enlarged board of Appeal.
The present application of Art 13 RPBA20 in case of deleted claims shows how the lack of an instance in which the discretion of the boards can be checked can be deleterious.
It is not acceptable that the fate of a patent, when claims are deleted, even at a late stage, depends on the discretion of the board dealing with the case.