CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1800/21 - Deletion of claims can be an exceptional circumstance under Art 13(2) RPBA

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The patent relates to a method for oxidising ammonia and a suitable system.

Brief outline of the case

The OD decided to maintain the patent in amended form according to a ne MR filed in opposition. The opponent appealed.

In its communication under Art 15(1) RPBA, the provisional opinion of the board was that claim 21 of the MR was clear, and claim 22 could not be challenged under G 3/14. Claim 22 was considered novel and inventive.

The board decided that claim 1 as maintained lacked IS over CPA=D2=WO 98/28073, not mentioned in the ISR established by the EPO, as the claim was merely the result of an arbitrary selection.

The board did not admit AR I-IV under Art 12(3) and (5) RPBA for lack of substantiation.

AR V was admitted under Art 13(2) RPBA.

A late fled document from the opponent, D16, was not admitted under Art 12(6) RPBA.

The bord decided maintenance according AR V.

The opponent’s point of view

AR V was not admissible, as the proprietor had not put forward any valid reasons for exceptional circumstances. It was not exceptional that the board had followed the opponent on some points.

There was no surprising procedural development that would justify taking AR V into account. This constituted a new line of defence, since in principle a decision had to be made on a request as a whole. The request could and should have already been filed in the opposition proceedings.

It was contrary to the convergent approach if exceptional circumstances were seen in the fact that a request was prima facie allowable, since prima facie allowability was already to be taken into account in the first and second stages of the convergent approach.

Since no exceptional circumstances had been shown, AR V should not be taken into account pursuant to Art 13(2) RPBA.

The proprietor’s point of view

AR V was to be considered under Art 13(2) RPBA, as there were exceptional circumstances.

Claims 1 and 2 were clear; in particular, no lack of clarity had been caused by amendments.

D16 should not be admitted to the proceedings.

The board’s decision

In AR V, all method claims, i.e. method claims 1 to 20 of the main request, were deleted without replacement and only the device claims (claims 21 to 25 of the MR) were retained as claims 1-5.

For the board, AR V is to be considered as an amendment to the appeal submissions, whereby the board cited a series of decisions of the BA.

The deletion of the process claims leads to the necessity of also examining the device claims. Therefore, it cannot be regarded merely as a waiver of part of the subject matter of the patent, which would not constitute an amendment to the appeal case.

The question of the extent to which the remaining claims have already been discussed or the scope of the necessary further examination, on the other hand, concerns aspects of procedural economy and the fairness of the proceedings.

With reference to some decisions, the board held that, contrary to the line taken in the case law of the boards of appeal after the introduction of the RPBA, it is not already relevant for the question of whether an amendment exists, but only for the exercise of discretion to be carried out in a second step as to whether it can still be admitted into the proceedings.

The bord referred to a now predominant view, supported by T 494/18, Reasons 1.3.2, with reference to further case law, inter alia T 602/21, grounds 9.2.2, in which the two step approach of application of Art 13(2) was confirmed.  

For the board, it was therefore necessary to check whether exceptional circumstances exist.

The board considered itself bound by the procedural rules, but must interpret their provisions appropriately when applying them. It would not be legitimate to limit the term “exceptional circumstances” to the typical case of reaction to a late procedural development mentioned in the explanatory remarks on the introduction of the RPBA.

On the one hand, this is only mentioned as an example of an application, alongside which others appear possible. Secondly, the preparatory work in accordance with Art 32 of the VCLT would in any case only be a supplementary means of interpretation, which can confirm the meaning of a provision determined in accordance with the general rule of interpretation in Art 31 of the VCLT, but can only change it in a few exceptional cases.

In this respect, in T 2295/19, Reasons point 3.4.12, the board there already pointed out that the wording of Art 13(2) RPBA only requires the existence of exceptional reasons, but not a causality between these reasons and the filing of the late amendment. The reaction to a late procedural development is only one of several possible cases of application that can be subsumed under the term “exceptional circumstances”.

In the case where the deletion of a category of claims is seen as an amendment, the Board has already once held that the fact that the restriction significantly promotes procedural economy by clearly removing existing objections without raising new issues can be considered exceptional circumstances within the meaning of Art 13(2) RPBA , see T 1857/19, Reasons 1.1. The Board adheres to this view and accordingly agrees with the view in T 2295/19, Reasons 3.4.6-3.4.14, that exceptional circumstances do not have to lie in the course of the proceedings, but can also be of a legal nature.

For the board, based on T 2295/19, a uniform line of case law seems to be developing to the effect that in cases where a straightforward amendment such as the deletion of an entire claim category results in a version of the application on the basis of which the patent can be recognisably maintained, exceptional circumstances within the meaning of Art 13(2) RPBA may exist. These allow a positive exercise of discretion if the amendment does not shift the factual or legal framework of the proceedings, does not require a rebalancing of the subject-matter of the proceedings and does not run counter to the principle of procedural economy or the legitimate interests of a party to the proceedings


In the communication under Art 15(1) RPBA, the board made clear that process claim 1 was lacking IS.

Some boards have made clear that they do not necessarily follow the decision of the OD and can come to the conclusion, e.g. T 317/20, see below.  

In T 238/19, none of the AR 1 to 5 was subject of the decision of the OD, as the patent was maintained according to the MR.

The board held that, according to Art 12(1,b and c) RPBA, the appeal and the statement of grounds of appeal, as well as all written replies to be filed within four months after notification of the statement of grounds of appeal, constitute the basis of the appeal proceedings. As the AR were not substantiated, they were not admitted in appeal.

In the present case the situation is similar in that AR I-IV were not admitted in appeal for lack of substantiation.

In T 1857/19, the board envisaged two possibilities. The mere deletion of a category of claims is not to be considered an amendment of a party’s appeal case or could be seen as exceptional circumstances under Art 13(2) RPBA.

It is only in T 2295/19 that deletion of an entire claim category an be considered as exceptional circumstances within the meaning of Art 13(2) RPBA ( and not Art 13(2) EPC as mentioned in the catchword).

In T 482/19, the product claims were deleted. The attacks against the product claims were on the table since the beginning of the opposition procedure and since the beginning of the appeal procedure. The amended requests were thus not admitted.  

In T 317/20, the board noted that the proprietor had to expect that the board might not uphold the opposition division’s decision. The board was also not persuaded by the proprietor’s submission that the deletion of claims 7 and 8 from AR 11, 18 and 19 and claims 6 and 7 from AR 17 improved procedural economy without changing the factual situation. The board has not seen any exceptional circumstances justifying not having presented this line of defence earlier in the appeal proceedings.

Some boards held that due to the mere fact that such requests were considered as an amendment to the proprietor‘s case, they were not admitted even if they could be considered as not detrimental to procedural economy. See T 2261/15, Reasons 2.1; T 1259/17, Reasons 2.3; T 482/19, Reasons 5, or T 317/20, Reasons 28 ff.

New line of case law?

Therefore, concluding, more or less, from a single decision that, in case of the deletion of a category of claims, a new line of case law is emerging is somehow daring. Strong doubts are permitted.

The only line of case law which has emerged is that any late filed requests in which some claims have been deleted are considered as an amendment under either Art 13(1) or 13(2) RPBA.

One can be happy for the proprietor with the admissibility of AR V. One could also conclude that the board wanted a any rate keep the patent alive, a bit like the German Federal Court does.

In this respect it is noticeable hat the board spent much efforts trying to justify the admissibility of AR V. At the same time, the board did not admit D16 with a rather sweeping statement. Admitting AR V and D16 would have been fair in  the present instance. This would most probably have meant remittal.

The present decision shows once more that in procedural matters the boards diverge a lot.

What parties need is reliability and not a mere lottery in procedural matters.


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