The proprietor appealed the decision to revoke its patent.
Brief outline of the situation
The MR filed in opposition and maintained in appeal, now AR 1, contained claims 1 and 6 as independent claims.
In the new MR, claim 1 and its dependent claims 2 to 6 as well as claims 11 and 12 have been deleted. Claim 6 of the former MR has been renumbered to become claim 1 of the new main request.
The opponents argued that the filing of the new MR constituted a change of the appellant’s case.
The proprietor insisted that the new MR did not constitute a change of case, as merely claims have been deleted and the remaining claims were identical to the claims filed when entering appeal. For the proprietor, the board did not have discretion to not admit the new MR.
The board’s position
The board disagreed, as for it, any new claim request may, and often will, represent a change of the party’s case because it may involve an assessment of the allowability of subject-matter or of arguments, which assessment has not been part of the case before.
For the board, admitting the new MR into the proceedings would thus have involved an examination during OP as to whether the added-matter objections raised by the opponents would have to be regarded differently for the subject-matter of claim 6 than for the subject-matter of claim 1. This had not been addressed before, and therefore constitutes a new line of defence on the part of the appellant, which represents a change of the appellant’s case.
The decision is interesting in that the board commented on the case law cited by the proprietor to support his view that deletion does not represent a change to a party’s case.
Analysis of the case law cited by the proprietor
In T 1480/16 the board explicitly states that the admission of auxiliary request 5 is at the discretion of the board, as stipulated in Article 13(1) RPBA20 or 07. The board concluded that the deletion of claims does not represent a change to a party’s case. This is different from the case at hand as in T 1480/16 no new discussion would have been needed (Reasons 2.2 and 2.3). It is difficult to follow the board on this point, as the discussion would, by any means, not be new, see below.
An analogous conclusion was reached in T 995/18 (dependent claim 3 deleted) and T 1792/19 (deletion of the method claims).
In T 981/17 (deletion of product claims 5-8), the board again based its conclusion on the admissibility of the factual situation (see Reasons 3.2).
In T 914/18 (deletion of “preventing”), the board did not consider a deletion of the claimed subject-matter to be an amendment of a party’s case, “provided the deletion … do not lead to a fresh case”. The deletion was “without shedding new light on the remaining subject-matter and without other consequences on the parties’ respective appeal cases” (see Reasons 4.1).
In T 1857/19, the board took the view that as the deletion of a claim led to the limitation of the claims to a claim category which was the principal subject of the discussion, the factual and legal framework of the appeal was not changed (Reasons 1.1). The board envisaged under which circumstances the mere deletion of a category of claims is not to be considered an amendment of a party’s appeal case or could – at least – be seen as exceptional circumstances under Article 13(2) RPBA20.
In T 306/18 (limitation to a method claim) the board held that the deletion of an independent claim was a change of case. However, as no new issues were to be considered, the factual and legal framework of the appeal procedure was not changed (Reasons 5.1.1 and 5.1.4).
General conclusion of the board
For the board, case law has thus by no means adopted an approach in which the deletion of claimed subject-matter can never be regarded as a change of case.
In fact, none of the decisions cited by the appellant provides support for such an approach. Quite the opposite, it demonstrates that the deletion of claims in a newly presented claim request can or cannot constitute a change of case, depending on the circumstances of the case, and that its admission is subject to the discretion of the board in accordance with Article 13(1) RPBA20 or, as the case may be, Article 13(1) RPBA07.
In exercising its discretion, the board decided not to admit the new main request since it was presented at a very late stage of the proceedings, would entail a fresh discussion of the issue of added matter and because the deletion of claims 1 to 6 and 11 and 12 would prima facie not overcome the added matter objections against the former main request (now auxiliary request 1).
The board added that it is of no relevance that the conclusion of the board regarding added matter could not have been foreshadowed in its communication pursuant to Art 15(1) RPBA20.
While it is true that the deletion of claims 1 to 6 might not appear to overcome the objection under Art 123(2) against original claim 6 now claim 1, the following has be noted:
In his statement of grounds of appeal, the proprietor explained why in its opinion claims 1 and 6 were not offending Art 123(2).
In their replies to the appeal the opponents only dealt with the independent claims in general or simply said that corresponding objections against claim 1 applied to claim 6.
In its communication under Art 15(1) RPBA20, the board did not make any specific comment about claims 1 and 6 and merely stated that, as far as amendments are concerned, the parties should be prepared to present “their arguments on which passages of the description can be combined”.
It thus appears not appropriate for the board to state that with the deletion of some claims and the concentration on claim 6, now claim 1 a new situation was created, which could not be dealt with by the board.
Claiming on top that it was irrelevant whether “the conclusion of the board regarding added matter could not be foreshadowed in its communication pursuant to Art 15(1) RPBA20”, is no more than a protective assertion without any substantive merit. In the present situation the proprietor was deprived of a proper judicial revue of the opposition division’s decision. All the elements needed for this review where in the file.
The board was apparently simply trying to get read of a case (think of the huge back log) and acted in an over formalistic way.
The absence of a body able to check whether the discretion of the boards has been properly exercised, is making the situation for appellants and respondents unnecessarily difficult.
It appears more and more that if a board can see a way to deal with a case in a formalistic and thus expeditious way, the discretion offered to the boards by the RPBA20 is no more than a fig leaf helping it to increase its throughput.
This kind of lottery effect is difficult to accept for the parties to appeal.
Update: Further decision on deletion of claims
AR 6A, 8A, 9A, 11A and 12A only differed from AR 6, 8, 9, 11 and 12 in that claim 2 thereof was removed
Claim 2 in AR 6, 8, 9, 11 and 12 was held offending Art 123(2).
AR 6A, 8A, 9A, 11A and 12A were filed after the notification of the summons to oral proceedings and after the patent proprietor received the communication of the Board pursuant to Article 15(1) RPBA20.
The objection under Art 123(2) against said claim 2 was not raised in the communication of the Board for the first time, but was already in the statement setting out the grounds of appeal of the opponent, at point 5.2, to which the patent proprietor already reacted on time by filing AR 15 to 17.
For the board, the proprietor failed to justify with cogent reasons that the filing of auxiliary requests 6A, 8A, 9A, 11A and 12A was occasioned by exceptional circumstances.
The Board therefore decided to not admit auxiliary requests 6A, 8A, 9A, 11A and 12A into appeal proceedings according to Art 13(2) RPBA20.
For the proprietor, the patent was maintained according to AR16.
AR 16 was based on AR 15, which corresponds to the maintained version according to the appealed decision, and contains amendments (referred to as features 1 to 4 in this letter) aimed at overcoming the objections of added subject-matter against claim 1 (feature 3) claim 2 (feature 4) as well as the patentability objections based on document D1 (features 1 and 2, see point 3.4) raised in the statement setting out the grounds for appeal of the opponent against said maintained version.
The board held that AR 16 was a timely reaction to the objections raised in the statement setting out the grounds of appeal. The Board saw no reason to conclude that it could or should have been filed earlier and admitted it under Art 12(4) RPBA07.
Objections against this request were considered by the board as not being substantiated as the opponent merely stated that objections formulated against the main request “apply likewise to the claims of each of the auxiliary requests”.
It was thus not apparent, without any further explanation from the opponent, how objections raised against the main request, formulated even before auxiliary request 16 was filed at all, could “likewise” apply to AR 16 unknown to the opponent at that point in time.
The board added that it is not its task to search and select between the objections of the opponent against higher ranking requests those which theoretically could apply to AR 16, and to adapt them taking the amendments contained in AR 16 into account.
The present decision reminds the parties that they should react as early as possible to any amendment of the opposite party’s submissions
Merely stating that objections to a given request apply likewise to other requests, even not yet, filed is a no-go.
Deleting claims does manifestly help procedural economy and such requests should be admitted even at a late stage as the argumentation does not have to be changed, at best shortened.
The problem of deletion of claims should not be dealt with in such a petty formalistic way.
It is high time that to end up the lottery happening at the boards.