EP 2 822 613 B1 relates to a wound treatment device and covering device for the same.
Brief outline of the case
The OD did not admit the new MR and AR1 under R 80. AR2 and 3 were not admitted as filed too late. The patent was thus revoked.
The proprietor appealed the revocation.
The board held that the OD had incorrectly applied the criteria of R 80, set aside the OD’s decision and remitted the case for further prosecution.
In the present case, an objection of lack of N was raised against claim 1 of the granted patent. In response to this objection, the proprietor replaced this independent claim with three independent claims.
The opponent’s point of view – Non admissibility of the MR
According to the opponent, R 80 requires the proprietor to respond to an objection to an independent claim in principle only by amending that one independent claim.
Also according to decision T 181/02, Reasons point 3.2, the replacement of a single granted independent claim by two or more independent claims should only occur in exceptional cases. This may be the case if a granted independent claim covers two specific embodiments.
For the opponent, neither of these two constellations corresponds to the present case, in which independent claim 1 as granted was replaced by three new independent claims, in each of which a feature from the description and, in some cases, additional features of dependent claims were added.
The opponent also referred to T 2063/15, Reasons 4.1.2, last sentence, according to which such amendments based on the description are in principle contrary to R 80.
The board’s decision – Admissibility of the MR
The board refers first to T 295/87, according to which an amendment not based on the grounds for opposition, in which new claims are proposed which have no equivalent in the granted patent, is not admissible, as the proprietor could not modify its claims in the absence of an opposition.
The board was of the opinion that no general requirements can be derived from R 80 as to the form in which a proprietor may amend claims. An amendment has to be considered prompted by a ground for opposition and referred to T 2982/18, Reasons 2.4, and to T 359/13, Reasons 1.1.
In particular, R 80 makes no distinction as to whether the features additionally included in a challenged claim originate from dependent claims or from the description. The only decisive factor for assessing the requirement of R 80 is whether the amendment made is prompted by a ground for opposition.
In this context, it must be examined whether the amendment is to be regarded as a serious attempt to counter a ground for opposition, and referred to T 750/11, Reasons 2.3.2.
Whether the features additionally included in a challenged independent claim originate from dependent claims or from the description may have an effect on the complexity of the amendment and may play a role in discretionary decisions on the admissibility of late submissions.
However, such admissibility decisions must be distinguished from the application of R 80. Rule 80 is not designed as a discretionary rule, but concerns a substantive requirement for the admissibility of an amendment in opposition proceedings. This is also confirmed by the “Travaux Préparatoires”, on R 57a, now R80.
Whether the requirement of R 80 is fulfilled can therefore only be used in the context of prima facie allowability of a set of claims in admissibility decisions on sets of claims – just like other substantive provisions. Like the complexity of the amendment, prima facie allowability can be a criterion for the exercise of discretion when admitting late submissions.
As regards the replacement of an independent claim affected by a ground of opposition by several independent claims, the board agreed with decision T 431/22, Reasons, point 1, according to which R 80 does not preclude such an amendment, provided that the subject-matter of the new independent claims is limited or amended in comparison with the subject-matter of the challenged claim. As explained in T 431/22, it is in principle legitimate for a proprietor to attempt to cover parts of the attacked independent claim by means of two or more independent claims in order to overcome a ground for opposition. The board referred here to T 2290/12, Reasons 4.1. As stated in T 99/04, Reasons 13, the purpose of R 80 is not to prevent a patent proprietor from maintaining the patent as broadly as possible, taking into account the grounds for opposition.
The proprietor’s reference to G 1/84 was pointless. This decision concerns a completely different subject, “opposition by the patent proprietor” than R 80 and contains in Reasons 9 only the general statement that the opposition procedure is not intended as an extension of the examination procedure.
Contrary to T 610/95, Reasons 2.2, it cannot be inferred that the replacement of an independent claim by several other independent claims should in principle be equated with a continuation of the examination procedure in violation of R 80.
The board specified that, if an attacked independent claim is maintained unamended and supplemented by further, dependent or independent claims, e.g. in order to create fall-back positions which are easier to defend in any subsequent proceedings before national courts or the UPC, this does not take care of a ground of opposition, since the amendment does not result in a different assessment. In such a case, R 80 would not be satisfied.
In the present proceedings, by replacing the challenged independent claim with three other independent claims, the proprietor pursued the legitimate aim of maintaining parts of the challenged claim which, in its opinion, are not affected by the asserted ground for opposition.
All three newly added claims were limited in relation to the challenged and not further pursued claim. These restrictions in the respective claim – and thus also overall – obviously serve to overcome the ground for opposition raised. In the present case, the MR therefore fulfilled the requirement of R 80.
Comments
The decision is interesting as it makes clear a series of points clear:
- R 80 is a substantive rule and not a procedural rule
- a decision on the admissibility of amended claims under R80 has not to be confused with a discretionary decision on the admissibility of requests
- opposition proceedings are not the continuation of examination proceedings
- any amendment to the opposed patent ought to answer a ground of opposition, even not raised by the opponent
- adding independent or dependent claims to an unamended claim is not answering any ground of opposition
- replacing an attacked claim by a plurality of independent claims is not a priori infringing R 80, and it is irrelevant whether the new independent claims comprise features from the description or from granted dependent claims.
I would add that, provided the amended claims are filed in due time, they do not need to be convergent as the proprietor is free to decide how to defend its patent.
It is only if amended claims are late filed that the convergence could play a role in their admissibility. Although taken in examination, non-convergent late requests need not be admitted in the procedure, see T 2096/09, Reasons 5. This stance applies mutatis mutandis in opposition.
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