Reminder – Before opposition divisions
It should be kept in mind that before an opposition division combining claims as granted even during oral proceedings is not considered late but is rather considered admissible as the opponent cannot be surprised with such a combination
A combination of granted claims is admissible and the discretion of the opposition division was correctly exercised.
Before the boards of appeal
The board held that requests which further limit subject-matter by inclusion of features of dependent claims are seen to be a normal and legitimate reaction to the decision and are therefore normally admitted under Art 12(4) RPBA
The features of granted dependent claims 5 and 6 were added to previous claim 1 to further differentiate from the cited prior art.
Contrary to the opposition division, the board considered claim 1 as granted as lacking novelty.
Claim 1 of AR 1 filed during oral proceedings before the board was a combination of claims 1 and 6 as granted.
The proprietor essentially argued that this auxiliary request could not be considered as being late filed, since the intention to file an auxiliary request had been announced in the reply to the appeal that the claims of this auxiliary request would be based in particular on the combination of the claims as granted.
The board noted that the intention to file an AR on the basis of a combination of claims as granted is not a request to be considered by the parties and the board.
Furthermore, the proprietor/respondent did not indicate which claims as granted should be combined and it could not be inferred by either opponent 2 or the board what the subject matter of the claims of the hypothetical AR might be.
The submission of AR 1 at this stage of the proceedings is therefore contrary to the principle of procedural economy according to Art 13(1) RPBA20.
Older case law
AR 2 and 3 were filed when entering appeal.
Both AR claimed in claim 1 an embodiment which was limited by the inclusion of granted claim 7.
This combination was already attacked in the opposition statement for lack of inventive step.
Although a discussion of such a request may not have been necessary in the opposition proceedings, this fall-back position was known to the patent proprietor.
Following the appeal of the opponent/appellant 1 against the version of the patent maintained in the proceedings at first instance in accordance with auxiliary request 1, this combination could already have been taken up with the response to the appeal.
The Board also failed to see why the filing of auxiliary requests 2 and 3 should constitute a reaction to the Board’s preliminary opinion since the proprietor filed a set of AR in reaction to the Board’s preliminary opinion which were limited in a different direction.
The corresponding AR 2 and 3 were thus not admitted under Art 13(1) RPBA07
The mere announcement of requests, whether in the written procedure or during oral proceedings, is not binding for a body of the EPO.
See for example T 1105/14, T 764/03 or T 3027/18.
Irrespective of the question of procedural economy, the decision of the board in
T 3037/78 is thus perfectly understandable as the AR were merely announced but not submitted.
Diverging case law
There is thus diverging case law when it comes to combining claims as granted.
Some boards admit such requests, some do not. The decisions mentioned here are exemplary of many more of the same kind.
The best solution would be to resolve this diverging case law by a corresponding referral to the EBA.
What to do in the meantime?
Before opposition divisions
If the proprietor intends to file requests in which claims as granted are combined he should already do so before the opposition division.
This is the safest option as those requests cannot be considered late filed.
Before the boards of appeal
If the proprietor prefers waiting to enter appeal to file requests in which claims as granted are combined, he should do so as early as possible, preferably when entering appeal.
The proprietor better not wait until the board has expressed an opinion, be it in a communication or in the annex to the summons.
Be it in opposition or in appeal, only requests in which the totality of granted claims is combined can be taken into account.
Be it in opposition or in appeal late requests in which the totality of granted claims is combined are combined should
- be prima facie convergent with previous requests
- not give raise to new objections, especially under Art 123(2);
- resolve all objections raised up to then in the procedure.
If those conditions are not fulfilled, they have little chance to be admitted.