EP 3 147 059 B1 relates to a method for the production of a workpiece with modified toothing geometry.
Brief outline of the procedure
The patent was maintained according to AR76, originally AR XIVa””.
A number of AR were not admitted in the procedure by the OD for non-compliance with R 80.
Proprietor and opponent appealed. Later the opponent withdrew its appeal and the opposition.
The board decided remittal as it held that the OD had wrongly applied R 80.
We will discuss here the fate of AR2.
The proprietor’s point of view on AR2
The four independent claims 1, 2, 8 and 11 formulated in AR 2 were based on a combination of granted claims and thererefore AR2 fulfilled all the requirements set out in R 80.
Claim 1 is essentially based on a combination of the granted independent claim 1 and parts of the dependent claim 4.
Claim 2 is essentially based on a combination of the granted independent claim 1 and parts of the dependent claim 2.
Claim 8 is essentially based on a combination of the granted independent claim 1 and parts of dependent claim 8.
Claim 11 is essentially based on a combination of the granted independent claim 1 and parts of dependent claim 11.
The OD’s decision on AR2
The methods now defined in the four independent claims were not disclosed in the granted patent. In particular, due to the large number of alternatives resulting from the numerous ‘and/or’ formulations, claims 8 and 11 as granted allow for an almost unmanageable number of feature combinations, from which it is not possible to ‘pick out’ a single combination.
Furthermore, the independent claims did not relate to alternative embodiments of a method, so that the formulation of several independent claims was inadmissible per se.
Finally, the amendments were not appropriate and contradicted the principle of procedural economy, particularly in view of the more than 100 new AR, which would lead to an ‘overloading’ of the proceedings.
The board’s decision on AR2
R 80 stipulates as the sole condition for amendments that they must represent a bona fide attempt to overcome a ground for opposition and thus prevent the revocation of the granted patent.
In the present case, in all four independent claims of AR2, the claimed method is limited by additional features from dependent claims, which is to be regarded as an attempt to distinguish the method claimed in the claims from the method known from E1.
The excessive use of ‘and/or’ formulations in the dependent claims of a set of claims may make it difficult to anticipate possible future fallback positions in the granted set of claims. Under certain circumstances, this may also raise questions as to whether the fallback positions were originally disclosed.
However, these are questions that would have to be examined under the provisions of Art 84 and 123(2), if necessary, and have no bearing on the assessment of the amendment under R 80.
Furthermore, the methods defined in the four independent claims of AR2 do not necessarily have to be based on alternative, mutually exclusive embodiments.
The board added that, according to established case law of the boards, the existence of two alternative embodiments in the contested patent may mean that, if the scope of protection is restricted, the use of two independent claims is permissible.
Conversely, however, this does not mean that this criterion is mandatory, i.e. that only in the case of several alternatives mentioned in the contested patent may these be pursued in independent claims.
On the contrary, it has already been established in T 0263/05, Reasons 4, and T0123/22. Reasons 3.12, that replacing a single granted independent claim with two independent claims is not only permissible in exceptional cases, but that in each specific case the amendments must be assessed individually to determine whether they are an appropriate and necessary response to avoid revocation of the contested patent on the basis of a ground for opposition.
Since granted dependent claims 2, 4, 8 and 11 all referred directly to granted independent claim 1, it was appropriate to formulate them as four independent claims. Only in this way could the proprietor pursue these features independently of the features of the other three dependent claims.
The inclusion of the additional features also leads to a limitation of the claimed subject-matter in all four independent claims of AR2 in order to distinguish it from the method known from E1. Since the OD had considered the subject-matter of independent claim 1 according to AR1 to be lacking N, these amendments were also necessary.
For the board, the OD was correct in stating that the submission of more than 100 AR can lead to an overload of the proceedings, which could ultimately also constitute a potential abuse of procedure, since neither the other parties to the proceedings nor the deciding body can realistically deal with all the requests in detail and prepare adequately for their discussion in OP.
However, this is a question that must be examined when admitting these requests, not whether the respective amendments satisfy the requirements of R 80. This must be clearly separated, as explained in detail in T 0123/22, Reasons 3.7 and 3.10.
Comments
The decision makes clear that R 80 cannot be used for barring the proprietor from answering a ground of opposition.
Filing a plurality of independent claims in reply to a ground of opposition is not limited to the case where alternative, mutually exclusive, embodiments are concerned.
Any problems resulting from an excessive number of “and/or” formulations can and has to be dealt with under Art 84 and Art 123(2). Only as ultima ratio, abuse of procedure can be considered.
An excessive number of “and/or” formulations can however lead to massive problems of clarity and of added matter in examination. In view of G 3/14, when combining an independent claim with a dependent claim Art 84 is not applicable. Only Art 123(2) is applicble.
The massive use of “and/or” formulations in examination has actually for purpose the save claim fees.
In examination the actual number of claims should be determined taking into account all the possibilities opened by “and/or” formulations and the claim fees should correspond to the real number of claims therewith created.
On the procedure
The N destroying document for AR1, E1, was mentioned in the ESR under category X,D.
In the present case, the following can be said about some of the claims as granted:
- Claim 1 no “and/or”
- Claim 2/1 3 “or” + 3 “and” + 3 “preferably”
- Claim 3 according to any preceding one
- 1 and/or followed by 4 alternatives + 1 “preferably”
- Claim 4 according to any preceding one
- 3 “and/or” + 4 “preferably”
It is clear that the work of the ED can be considered as suboptimal, if AR1 was N stricken by E1.
Furthermore, the ED did not look at the dependent claims, as such a series of claims should never have come to grant.
It is therefore understandable that the OD was not willing to do the job the ED should have done, and preferred to block AR2 with R 80.This was however a mishap.
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