EP 3 068 861 B1 relates to relates to a multi-use solid detergent composition comprising a protease enzyme and methods of stabilizing a use solution.
Brief outline of the case
The patent as granted as well as AR1-2 and 4 lacked IS. AR3 infringed Art 123(2).
The patent was thus revoked and the proprietor appealed.
The board held that claim 5 as granted and in AR1-4 infringed Art 123(2).
AR5-8 were not admitted under Art 13(2) RPBA although claim 5 was deleted. AR9 was also not admitted under Art 13(2) RPBA.
The patent was still revoked, but for different reasons.
We will have a look at the non-admissibility of AR5-8.
The proprietor’s point of view
The proprietor argued first that a request that differed from existing ones merely by the deletion of some claims did not constitute an amendment of a party’s case, so that Art 13(2) RPBA did not apply.
The proprietor also argued that the patent was essentially revoked by the OD under Art 56. This objection was at the core of the appeal and should now be discussed in the context of the newly filed requests as the objection under Art 123(2) EPC did no longer apply.
The proprietor finally argued that it was unreasonable to expect from a proprietor to file AR dealing with all the objections, because this would lead to an unreasonable number of diverging requests.
The board’s decision
The board noted that in matters of claims deletion, there is plethora of case law on this issue, with each case having been decided upon their own specific facts and submissions, cf. CLBA, 10th Edition, V.A.4.d).
The board found itself in agreement with the line of jurisprudence presented e.g. in T 2091/18, Reasons 3 and 4, which holds that the deletion of one or more independent claims constitutes an amendment in the sense of Art 13(2) RPBA.
One factor frequently considered when assessing whether a deletion of claims amounted to an amendment was whether it would require a fresh discussion on N or IS, or instead, and whether the deletion would merely reduce the complexity of the proceedings by eliminating one of the matters in dispute.
The board observed that, after having received the board’s preliminary opinion, the proprietor did not only file the new AR 5-8 but also submitted new facts to be considered in the context of the assessment of IS.
These new facts, their admittance into the proceedings and the arguments based thereon were not and did not have to be considered by the board in the context of the higher ranking requests, but would have to be discussed for the first time in the context of the new AR5-8.
Therefore, in the concrete procedural situation of the case at hand, the new requests do not merely reduce the complexity of the case but necessitate the evaluation of new facts and the beginning of a new discussion.
If follows from the above considerations that AR5-8 are considered to be amendments to the proprietor’s appeal case.
Since all AR5-8 were filed after the communication under Art 15(1) RPBA, their admittance into the proceedings is governed by Art 13(2) RPBA.
In the case at hand, the board did not see any exceptional circumstances because the objection under Art 123(2) EPC against granted claim 5 had already been discussed at the first instance proceedings and was raised again in the opponent’s reply to the grounds of appeal, so that the proprietor could – and should – have filed the requests dealing with this objection at the latest after the opponent’s reply but before the board issued its preliminary opinion.
Furthermore, the board did not see that a timely reaction of the proprietor to all relevant objections would have been impractical or would have led to an excessive amount of requests. To the contrary this is quite an ordinary course of events to follow.
Comments
In the present case, the proprietor waited way too long to submit AR with some claims being deleted.
As the board said, those AR should have been filed at the latest when replying to the opponent’s appeal. The same applies to the new facts relating to IS.
It is only in view of exceptional circumstances that requests filed after a board’s communication under Art 15(1) RPBA are admitted. In general, it is in case of objections raised by the board or if during OP, new objections arise from the discussion.
Case law with respect of requests with deleted claims
There are 4 lines of case law discernible when it comes to deletion of the claims.
A first line of case law considers that the deletion of method claims, product claims, dependent claims or alternatives in a request is not to be regarded as an “amendment to the party’s appeal case”, if the deletion does not change the legal and factual framework of the appeal. See T 1480/16, T 2243/18, T 1792/19, T 1151/18, T 1857/19, T 2201/19.
A second line of case law considers that the deletion of such claims or alternatives have indeed to be regarded as an “amendment to the party’s appeal case“, see T 1597/16, T 1439/16, T 1224/15, T 908/18, T 682/16, T 168/16, and T 1569/17 or T 2091/18, both mentioned in the present decision.
A third line of case law started with T 2295/19. In which the board was of the opinion that although deleting claims represents an amendment of a party’s case, but nevertheless accepted that such an amendment is not prejudicial to the process economy. In T 2225/19, the Board took the bother to go through a lot of case law on this topic and even consulted the „travaux preparatoires” to Art 114(2). This decision was followed e.g. in T 1800/21, T 685/21, T 1172/21, T 424/21 or T 967/22.
In a fourth line of case law, boards held that due to the mere fact that such requests were considered as an amendment to a party‘s case they were not admitted even if they could be considered as not detrimental to procedural economy. See T 1259/17, T 482/19 or T 317/20.
Conclusion
It appears thus that the majority of boards appear to be of the opinion that deleting claims in previous requests has to be considered as an amendment of the earlier requests.
When requests with deleted claims are filed in appeal, one aspect appears however very important: amended requests have to be filed as early as possible when entering appeal, preferably when filing the SGA or in reply to the appeal.
Filing them after, may end up with those not be admitted in view of the second and even more the third level of convergence.
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