EP 2 755 318 B1 relates to a blind system.
Brief outline of the procedure
Claim 1 as granted, and of ARI and ARVIII+IX lacked N over D6=EP 2 551 440, PA under Art 54(3).
For the OD, ARIII did not satisfy the requirements of R 80. The same applied to ARIV-VII.
The patent was maintained according to ARX.
The proprietor appealed.
After having discussed the lack of N of ARIII over D6, the board admitted ARXIb’+XIb”+XIc’ under Art 13(2) RPBA. ARX1b’ was deemed novel over D6 and the case remitted to the OD for further prosecution.
The board did not follow T 1138/02.
We will concentrate on ARIII in opposition and AR XIb’ in appeal.
The OD’s decision
Referring to T 1138/02, Reasons 2.2, the OD concluded that the set of claims of the ARIII did not satisfy the requirements of R 80. The reason given was that claim 1 contained four alternative features which did not relate to a common generic granted feature.
The OD further referred to T 181/02 and stated that the replacement of a single independent claim with several independent claims is permissible only in exceptional cases, for example where the granted independent claim covers several embodiments of the same subject-matter. This was not the case with ARIII, as the four alternatives did not relate to embodiments of a common subject-matter.
The opponent’s point of view
The opponent argued that alternatives (a) and (b) in AR XIb’ must share a common general concept in order to satisfy the requirements of R 80.
This was not the case here, as alternative (a) concerned the control electronics, whilst alternative (b) concerned the connections to the external control system.
Furthermore, the second alternative was merely an optional feature from granted claim 12, which contained several “and/or” combinations. The inclusion of such a feature in claim 1 was therefore comparable to the incorporation of features from the description, which, according to several decisions of the boards, was not compatible with R 80.
The board’s decision
The board noted that claim 1 of ARXIb’ covers only two of the alternatives contained in the by then withdrawn ARIII, namely features (a) and (b), corresponding to features (c) and (d) in AR III.
According to the case law of the boards of appeal, it is in principle permissible to replace a granted independent claim which was considered to lack novelty or inventive step in opposition proceedings with several independent claims, provided that these are each directed to subject-matter already defined in the granted dependent claims. Reasons points 4.7 and 4.8; T 993/07, Reasons 1.5; T 1679/09, Reasons 4.2 and 4.3; T 1025/14, Reasons 3.2; T 1191/22, Reasons 2.4.
The reason for this is that the patent proprietor must be allowed to maintain potentially patentable subject-matter that was already included in the granted set of claims.
In the present case, the board noted that the granted independent claim 1 was found not to be novel within the meaning of Art 54(3) by the OD. It was therefore permissible to replace it with several independent claims relating to different embodiments of the blind system, as already defined in the granted dependent claims. Furthermore, claims 7 and 12, on which alternatives (a) and (b) are based, are formulated in the granted version as dependent claims parallel to claim 1.
The present situation thus corresponds to the exception described in T 181/02, in which an increased number of independent claims may be prompted by the grounds for opposition.
By contrast, T 1138/02 relied on by the OD constitutes a decision in an individual case which is generally not to be followed.
R 80 merely requires that an amendment be prompted by a ground for opposition, i.e. that it aims to overcome such an objection and thereby avoid revocation of the patent.
The lack of novelty of claim 1 as granted may indeed give rise to an objection of lack of unity. However, lack of unity does not constitute a ground for opposition.
Furthermore, in opposition proceedings, the proprietor does not have the option of pursuing different inventions by means of divisional applications, cf. T 1416/04, Reasons 5.1; T 263/05, Reasons 4.8. In these circumstances, there is no reason to require the patent proprietor to choose between several claims that are dependent on claim 1 in parallel.
The board added that the use of “and/or” formulations in dependent claims does not preclude the compatibility of auxiliary request XIb’ with R 80. A plurality of “and/or” formulations may make it difficult to predict possible scope of protection in the granted set of claims and may raise questions regarding the original disclosure,
However, such questions may concern Art 84 or Art 123(2) and are irrelevant for the assessment under R 80, cf. T 1772/23, Reasons 4.3.
The board concurred with the proprietor’s reasoning regarding claim 12. This claim relates to a window with a blind system corresponding to claim 1 of ARI, which corresponds to the blind system of granted claims 1, 2 and 4. The amendments made consist merely of features which were previously incorporated by reference to other claims now being expressly set out in a single claim.
The board therefore concluded that the amendments made in ARXIb’ were prompted by the grounds for opposition and comply with the requirements of R 80.
Comments
A possible lack of unity is irrelevant when maintaining a patent in amended form
There is no doubt that the amendments carried by the proprietor cannot be queried under R 80.
However, it is surprising that neither the proprietor, nor the OD, nor the board referred to G 1/91. The board simply noted that lack of unity does not constitute a ground for opposition, and apparently overlooked G 1/91.
The headnote of G 1/91, made clear that, unity of invention, Art 82, does not come under the requirements that a European patent and the invention to which it relates must meet under Art 102(3) when the patent is maintained in amended form.
It is consequently irrelevant in opposition that the European patent as granted or amended does not meet the requirement of unity.
In the situation like the present one, it is actually irrelevant whether the proprietor includes a plurality of variants in a single independent claim, or if he files a plurality of independent claims, each relating to a separate variant.
The only further decisions in which T 1138/02 was positively cited were stemming from the same board. T 1138/02 and all those decisions are difficult to reconcile with G 1/91.
T 1772/23 has been commented in the present blog.
“And/or” formulations in the claims
As far as a plurality of “and/or” formulations in the claims are concerned, I refer to T 1063/24, also commented in the present blog.
A plurality of “and/or” formulations in claims “does not make it difficult to predict the possible scope of protection in the granted set of claims”, it makes the definition of the matter for which protection is sought difficult, cf. Art 84 and G 3/14 in opposition.
The scope of protection is defined in Art 69 and the Protocol. Since G 1/24, we know that Art 69 is not within the competence of the EPO.
A plurality of “and/or” formulations in claims should imperatively be tackled during examination, not only when it comes to independent claims, but also in respect of dependent claims. .
On the procedure
D6=EP 2 551 440, PA under Art 54(3) bears the IPC classification unit E06B 9/322.
The patent EP 2 755 318 B1, bears the IPC classification units H02P 6/00 and E06B 9/72.
The European search was carried in the IPC classification units, H02P and E06B.
The original search should thus have revealed D6, PA under Art 54(3).
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