Brief outline of the case
AR1c was filed in response to the board’s communication pursuant to Art 15(1) RPBA20. Hence, its admittance is in principle subject to Art 13(2) RPBA20.
The single method claim of this request is identical to method claim 1 of AR 1b pending during the opposition proceedings and “maintained” without further substantiation.
More specifically, new claim 1 no longer requires that the RRC message is an RRC Connection Reconfiguration message but now includes feature (d1), i.e. requiring that it is the “eNode B” that indicates via an RRC message whether to use the second or first buffer size level.
AR 1c was not admitted by the board under Art 13(2) RPBA20.
As there was no allowable set of claims on file, the patent was revoked.
The other claims of auxiliary request 1b, i.e. claims 2 to 12, among them apparatus claims including features not included in method claim 1, were deleted.
The board’s position
For the board, the crucial issue is therefore whether the filing of the claim set according to AR 1c constitutes an “amendment” of the proprietor’s appeal case within the meaning of Art 12(4) in conjunction with Art 12(2) RPBA20.
In other words, the first question to be answered is whether the board has any discretion at all to disregard that claim request under Art 13(2) RPBA20
Deletion of claims
The board was aware of the current divergence in the jurisprudence of the Boards of Appeal as to whether or not deletions of claims in certain claim requests amount to such an “amendment”.
First line of case law
One strand of jurisprudence holds that, if the deletions of claims in a previously filed claim request do not change the “factual and legal framework of the case” or “the subject of the discussions” and does not lead to a “re-weighting of the subject of the proceedings”, such deletions are not to be considered an “amendment” within the meaning of Art 12(4) RPBA20
Here the board refereed to T 1480/16-3.2.01, T 1857/19-3.3.05 or T 2201/19-3.5.05; also labelled “non-applicability approach”.
Second line of case law
According to another strand of jurisprudence, any deletion of claims from a previous set of claims amounts to an “amendment” of the applicant’s or proprietor’s appeal case and thus confers discretion to a board to disregard the claim request at issue. This discretion has then to be exercised in a reasonable manner according to a so-called “two-step examination approach“.
Here the board referred to J 14/19-3.1.01, T 494/18-3.3.06, T 2091/18-3.2.05, T 2920/18-3.3.03.
The line of case law adopted by the board
This board endorsed the conclusions drawn by the latter line of jurisprudence on the basis of a systematic interpretation of the notion of “amendment”, mainly for the reasons indicated in the above-cited decisions.
In addition, this board held that neither from the wording of Art 12(2) RPBA20 nor from the explanatory remarks to the RPBA20 can it be deduced
- that a party’s appeal case has to be directed to the “factual and legal framework”
- or the “subject of the discussions” relating to the party’s submissions, such as claim requests, on which the decision under appeal was based,
- or that “re-weighting of the subject of the proceedings” may not take place.
This provision rather requires simply that a party’s appeal case is directed to the “requests, facts, objections, arguments and evidence on which the decision under appeal was based”.
As a consequence, the submission of AR 1c constitutes an “amendment” to the proprietor’s appeal case, and Art 13(2) RPBA20 indeed applies here.
According to Arte 13(2) RPBA20, any amendment to a party’s appeal case made after notification of a summons to oral proceedings shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.
Furthermore, in the application of Art 13(2) RPBA20, the criteria applicable under Art 13(1) RPBA20 may be relied on. In accordance with Art 13(1) RPBA20, “[the] Board shall exercise its discretion in view of, inter alia, the current state of the proceedings, the suitability of the amendment to resolve the issues which were […] raised by the Board, whether the amendment is detrimental to procedural economy, and, in the case of an amendment to a patent application or patent, whether the party has demonstrated that any such amendment, prima facie, overcomes the issues raised by […] the Board and does not give rise to new objections”.
In the present case, as to the reasons for this late amendment, the patent proprietor maintained and referred to the related arguments concerning previous auxiliary request 1b, and argued that there was no necessity to add more at this stage, in particular, since the opponent did not raise an objection under Art 123(2) with respect to this claim request.
However, the maintenance of the arguments related to AR 1b does not address the late-filing of AR 1c, let alone constitutes a justification for this amendment, cf. Art 13(1), first paragraph, RPBA20.
For the board, the mere lack of an objection under Art 123(2) by the opponent cannot justify such late-filing either.
The patent proprietor thus failed to provide “cogent reasons” for the belated submission of AR 1c.
Furthermore, claim 1 of AR 1c includes the feature that it is the “eNode B” that indicates whether to use the second or the first buffer size level table. The term “eNode B” or its abbreviation “eNB” appears in the application as filed solely in paragraphs , , ,  and .
However, none of these paragraphs discloses that added feature. Claim 12 and paragraph  as filed may provide a basis for a downlink transmission of the indication which table to use, and a respective control by the network, but, contrary to the patent proprietor’s arguments, not necessarily for the “eNode B” performing this transmission. AR 1c is therefore, prima facie, not allowable under Art 123(2).
In view of the above, the board, in exercising its discretion, decided not to admit AR 1c.
As claim 1 of AR 1c was amended over claim 1 of AR1b after the communication of the board under Art 15(1) RPBA20 and that claim 1 of AR 1c was prima facie infringing Art 123(2), those reasons were good enough not to admit it under Art 13(2) RPBA20.
There has never been any doubt about the fact that an amendment of a claim following a communication has little chance to be admitted and that the conditions of Art 13(1) RPBA20 can apply to a request admissible under Art 13(2) RPBA20.
Deletion of claims
It is however noteworthy that the board found it necessary to deal with the deletion of claims in the new request and to analyse the existing case law in this matter.
Claims might have been deleted, but the actual reason for not admitting AR1c was the change in the wording of claim 1.
Why then bother to discuss deleted claims?
For the first line of case law see further T 2243/18, reasons 2; T 1792/19, reasons 2; T 1151/18, reasons 2.1; T 1857/19, reasons 1.1.
The second line of case law can be divided in two branches
The first branch considers that deletion of claims represents an amendment to a party’s case but at the same time found that such amended claims are admissible as they contribute to procedural economy, cf. T 2091/18, reasons 4, amended claims admitted; T 1597/16, reasons 4, amended AR VI admitted; T 1439/16, reasons 2, admitted as not detrimental to procedural economy; T 1224/15, reasons 5, admitted as objection under Art 123(2) by the respondent was late; T 908/18, reasons 1, admitted; T 682/16, reasons 5 to 8, admitted; even in T 494/18 cited by the present board a new request with deleted claims was admitted.
The second branch considers that requests comprising deleted claims are not admissible as they are simply too late. See T 1259/17 or T 482/19.
T 317/20 can be considered somehow in between the two branches as the deletion of a claim resulted in a set of claims for which features of a claim would have to be considered that thus far had not played any role in the appeal proceedings. This “would result in a substantial and unexpected change in the discussion at the oral proceedings“. On top the deletion of some claims did not overcome the objections raised under Art 123(2).
In the present case, the deletion of some claims had no influence on a prima facie problem of added matter.
T 423/18 published on 24.08.2022
The claims of AR 2 correspond to those of the main request wherein claims 1 to 7 have been deleted.
Since the claims of AR 2 are identical to claims 8 to 15 of the MR, which have been already discussed and also decided upon by the opposition division, the Board considered it appropriate not to apply its discretion under Art 12(4) RPBA07 to not admit AR 2 into the proceedings.
The file was remitted to the OD for further prosecution on the basis of AR2
Necessity of a decision of the EBA
In view of the clearly diverging case law deciding whether deletion of claims represents an amendment to a party’s case and is admissible or not in appeal should be subject to a referral to the EBA.
As already explained in previous publications, it is difficult to consider that deletion of claims does not improve procedural efficiency. Beside always possible exceptions, such requests with deleted claims should in principle be admissible even if they represent an amendment of a party’s case.
The minimum condition is that such requests do not give raise to further objections, cf. Art 13(1) RPBA20.