The patent relates to a method for producing a nitrided packaging steel.
Brief outline of the case
The OD decided that claim 1 as granted infringed Art 123(2) and maintained the patent according to AR1.
After the communication under Art 15(1), the proprietor filed a new MR as well as new AR 1, 2, 2A, 3, 3A, 4, 4A, 5, 5A, 6, 6A, 7, 8, 9, 9A, 10, 10A, 11, 11A, 12, 12A, 13, 13A, and 14. The proprietor later changed the order of the requests.
The board held that deletion of one alternative in the claims represents an amendment.
Eventually the patent was revoked.
The proprietor’s point of view
The MR and AR 1-9, 11, 18 and 24 were to be taken into account under Art 13(2) RPBA, as there were exceptional circumstances.
In the opinion of the t proprietors, the deletion of an alternative does not constitute an amendment to the appeal submissions. Even if the deletion were to be regarded as an amendment, there would be exceptional circumstances.
According to the proprietors, those requests were filed in response to the communication under Art 15(1) RPBA.
In the communication under Art 15(1) RPBA, paragraph 1.3, the assessment of the now deleted feature = feature 1.6, was based on an interpretation which had not yet been put forward in the previous proceedings.
The proprietors were also of the opinion that the opponent never raised the objection that feature 1.6 stating that an additional 210 ppm of unbound (free) nitrogen should be introduced into the steel. The opponent’s argument has always been that it is not possible to introduce 210 ppm in a single step and that this value must therefore relate to a two-stage process.
The amendments in AR 10, 12-17, 19-23 were disclosed in the original description on a consistent interpretation of features 1.6 and 1.7 of claim 1.
The opponent’s point of view
The MR and AR 1-9, 11, 18 and 24 were submitted too late. There were no exceptional circumstances.
Feature 1.6 of AR 10, 12-17, 19-23 infringes the requirements of Art 123(2).
The opponent argued that the interpretation made by the board was already contained in the notice of opposition and in the statement of grounds of appeal, in paragraph 1.1 in each case. The amendment should therefore have been made in the proceedings leading to the contested decision.
The board’s decision
The board assumed that the case law of the boards of appeal has meanwhile developed to the effect that any amendment of claims, in this case also the deletion of the alternative in claim 1, constitutes an amendment of the appeal case.
The board referred to Case Law of the Boards of Appeal of the European Patent Office, 10th edition (2022), Chapter V.A.4.2.2(d) and to T 2295/19, Reasons 3.4.1-3.4.5).
In the present instance, the board could not recognise any exceptional circumstances under Art 13(2) RPBA. .
The objection against feature 1.6 was raised and maintained by the opponent throughout the procedure.
It was also not apparent that the communication under Art 15(1) RPBA introduced a new interpretation of feature 1.6.
In addition, the proprietors responded to this objection in the earlier AR 8, which they submitted with the reply to the opponents’ appeal, by deleting feature 1.6. The earlier AR 6 and 7, which were submitted at the same time, also contain amendments which appear to have the purpose of removing the objection to feature 1.6. The proprietors have thus shown that they were aware of the objection and also had the opportunity to respond to the objection.
This deletion should therefore already have been submitted in the proceedings that led to the contested decision, but in any case with the reply to the opponent’s appeal.
Moreover, the proposed amendments are not conducive to procedural economy and do not prima facie resolve all of the opponents’ objections. It is true that a single objection, namely that relating to feature 1.6, is undisputedly eliminated by deleting this feature.
However, the sheer number of these new requests and the retention of the corresponding previous versions, containing feature 1.6, albeit as subordinate requests, argues against an improvement in procedural economy.
With their last submission, the proprietors replaced the MR and the 25 AR submitted in the response to the appeal with a new MR and 24 AR, with only 11 of the claim requests remaining unchanged compared to the response to the appeal.
The amendments in the new MR and the new AR 1-9, 11 and 18 therefore established new fall-back positions only after the board’s preliminary opinion had followed the opponent’s view, with the purpose of defending the patent against all remaining objections raised by the opponent. These requests were not convergent, which the proprietors justified with the large number of objections to which they had to respond.
This circumstance alone also indicates that it is by no means apparent that the new requests would prima facie resolve all the objections raised by the opponent.
The special case in which exceptional circumstances within the meaning of Art 13(2) RPBA could be seen in the fact that an uncomplicated 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 is accordingly not present here. The board referred to T 2295/19, Reasons 3.4.11, meanwhile confirmed by the present Board in T 1800/21, Reasons 3.4.6.
Comments
In view of the behaviour of the proprietor, waiting the communication of the board under Art 15(1) to confirm the objection against feature 1.6, although it was fully aware of the problem, and had submitted AR without this feature, the non-admission of late filed AR in which said feature was deleted is understandable. The late filed requests were certainly not helping procedural economy.
It is however difficult to follow the board when it claims that the case law of the boards considers the deletion of an alternative in a claim 1, or a set of claims, is always constitutes an amendment of the appeal case. Even if deletion of claims is considered an amendment, procedural economy appears also to play a role.
Diverging case law in matters of deletion of claims
In T 2019/20, commented in this blog, the board held that the deletion of claims does constitute “formally” an amendment to the proprietor’s case, but it is not an amendment in “substance”. It was rather a partial abandonment of the initial appeal case of the proprietor.
In T 2604/18, the board, although it eventually concluded that the deletion of claims is considered as an amendment to a party’s case under Art 13(2) RPBA, introduced a further notion: the new MR, based on the mere deletion of claims 5 to 7 of former “AR I”, can thus be considered not to change the factual and legal framework of the proprietor’s appeal case.
In T 424/21, commented in this blog, the board agreed with the board in T 494/18, which found: “According to their wording, Art 13(1) RPBA20 and Art 13(2) RPBA20 are both applicable to ‘any amendment to a party’s appeal case’.
The provision as such however does not define what is to be regarded as an ‘amendment to a party’s appeal case’, it is thus an undefined legal term.
An ‘amendment to the party’s appeal case’ is not identical to an amendment of the patent or of the patent application.
Some boards considered that deletion of claims do not represent an amendment to the proprietor’s case. See T 1480/16, Reasons 2.3; T 2243/18, Reasons 2; T 1792/19, Reasons 2; T1151/18, Reasons 2.1; T 1857/19.Reasons 1.1 and T 2201/19,Reasons 5. In T 2201/19, the board acknowledged that it was deviating from T 2091/18.
Some other boards held that in spite of considering such requests as an amendment to the proprietor‘s case they were admitted when they were not detrimental to procedural economy. See T 2091/18, Reasons 3 and 4 ; T 1597/16, Reasons 4; T 1439/16, T 1224/15, Reasons 5; T 908/18, Reasons 1.2; T 682/16, Reasons 7or T 168/16, Reasons 2.1.
Further boards even 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.
The case law in matters of deletion of claims, or alternatives in claims, is thus rather divergent. The boards are not even all agreeing whether the deletion of claims or alternatives in claims represent an amendment or not.
https://www.epo.org/de/boards-of-appeal/decisions/t221836du1
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