EP 3 542 211 B1 relates to a method and device and computer program for determining a representation of a spectacle glass rim.
Brief outline of the case
The OD decided that claim 7 as granted infringed Art 123(2). AR1 was not admitted by the OD under R 80. The patent was maintained according to AR2.
In appeal, the proprietor’s MR was AR1 not admitted by the OD. The board did not admit the MR under Art 12(6) RPBA and confirmed the maintenance according to AR2.
The case is interesting in view of the non-admissibility of AR1 and of the MR.
Claim 1 of AR1 contained two quite distinct alternatives [A] and [B].
The proprietor’s point of view
The proprietor considered that the OD had wrongly exercised its discretion by not admitting AR1.
With reference to the ECHR with regard to the protection of intellectual property, according to which no one may be deprived of their property, the proprietor argued at the OP that it had a right to defend its patent in such a way that the scope of protection of amended claim 1 was as broad as possible.
Due to this “guarantee of ownership“, both alternatives [A] and [B], each defining a different part of the original scope of protection of the granted claim, were necessary in order to obtain the greatest possible scope of protection.
The opponent’s point of view
The opponent explained at the OP that a second alternative in claim 1 leads to increased complexity of the proceedings, to a delay in the proceedings in the event of remittal to the OD and to a deterioration in procedural economy. These additional hurdles to achieving the opponent’s wish to revoke the patent or at least to restrict it as far as possible run counter to the opponent’s interests. The opponent therefore demanded a balanced and fair consideration between its own request and that of the proprietor.
The board’s decision
The board agreed with the OD when it considered that “two different alternatives in a single independent claim are to be examined separately for the requirements of the EPC” and can therefore be considered as two independent claims.
The board reminded that under R 80, claims may be amended to the extent that the amendments are occasioned by a ground for opposition under Art 100, even if this ground has not been invoked by the opponent.
To this effect, the board quoted a number of T decisions mentioned in the CLBA, Chapter IV.C.5.1.2, 10th edition, 2022.
The “guarantee of ownership” cited by the proprietor cannot be used without restriction as the sole criterion for assessing whether two alternatives in claim 1 are justified.
If this were the case, the proprietor could, for example, add an unlimited number of independent claims to a set of claims on the sole ground that all these added independent claims are covered by the original scope of protection of the granted patent. Such an approach, bordering on procedural abuse, would not be desirable for reasons of procedural economy alone. The interests of the opponent must also be sufficiently taken into account.
In opposition proceedings, the conflicting interests of the parties involved must be weighed against each other. Unrestricted recognition of the proprietor’s interest in the greatest possible protection is therefore not justified.
For the board, the extent to which the replacement of a claim by a claim with several alternatives is admissible under R 80 must be examined on a case-by-case basis. After weighing up the conflicting interests of the parties involved, it must be examined whether the multiplication of alternatives in the claim constitutes a relevant and necessary amendment.
The board also noted, that a novelty objection against alternative [A] of claim 1 cannot be overcome by the features of alternative [B] of claim 1.
The board thus concluded that, in the present case, the replacement of a claim with a claim containing two alternatives, was not justified and infringed R 80.
The board also held that the OD correctly exercised its discretion when not admitting AR1 in opposition proceedings. The OD’s reasoning for not admitting AR1 is based on a criterion found in the case law of the boards.
Comments
It has never been disputed that when a granted independent claim, covering a plurality of embodiments, was considred not allowable in opposition, the proprietor could file a plurality of independent claims covering each embodiment which fell under the scope of protection of a granted dependent claim.
A lack of unity does not hinder maintenance in amended form with a plurality of independent claims, provided those claims are themselves allowable, cf. G 1/91, OJ 6/1992, 253.
This does however not mean that, in all cases, the independent claim as granted can, in reply to an opposition boil down to a succession of alternatives. The board held rightly such an approach to be bordering on procedural abuse, and would not be desirable for reasons of procedural economy alone.
In the present case, the patent could not be maintained in view of an objection of added matter against a dependent claim and not against the independent claim.
The drafting of the independent claim with two alternatives was thus not warranted a priori, even if the opponent had argued that claim 1 as granted lacked N.
Whilst trying to save claim fees in examination such a move could be understood but cannot be encouraged and supported in opposition. It is in this respect useless to say the least.
Calling on the ECHR to defend a claim comprising different alternatives is, to say the least, farfetched.
Comments
Leave a comment