These two decisions are interesting as they illustrate well the role of R 80.
Brief outline of the case in T 273/17
The patent relates to a card including an electronic display.
The patent was maintained in amended form by the OD.
Both opponents appealed the decision. Opponent 2 withdrew its appeal after the board’s communication under Art 15(1) RPBA20.
During the appeal procedure, the proprietor submitted a new MR in which claims considered offending Art 123(2) in the communication under Art 15(1) RPBA20 were deleted. The board decided that this request was admissible and allowable.
The case was remitted to the OD with the order to maintain the patent on the basis of the new MR, and a description and figures to be adapted, if necessary.
Brief outline of the case in T 360/18
The patent relates to storage-stable, liquid fibrinogen-formulations.
The patent was revoked by the OD due to lack of sufficiency. The discussion in opposition was whether or not the claimed liquid fibrinogen-formulations were “stable at storage temperatures between 0 and 30°C for at least 1 month”. The OD decided in the negative.
The proprietor appealed.
The MR in appeal was identical to the MR underlying the OD’s decision.
The board held that that there were no verifiable facts to support the opponents’ statements that the claimed invention cannot be carried out. Furthermore, the opponents have not provided any evidence that the proprietor’s contention that all claimed embodiments are stable is incorrect.
As the OD had only taken a decision on Art 83 and since this decision was set aside, the file was remitted to the OD for further prosecution.
Considerations relating to R 80 in T 273/17
According to opponent 1, claim 1 of the MR would not comply with the requirements of R 80. Moving the feature relating to the opaque plastic sheet from the preamble to the characterising part of the claim would not meet a ground for opposition.
The OD admitted the late-filed MR as well as the proprietor’s argumentation that the amendment to claim 1 provided a better delineation of the proprietor’s position vis-à-vis E10 and thus facilitated the formulation of the proprietor’s PSA analysis and was thus in conformity with R 80.
The board held that compliance with the requirements of R 80 is to be assessed in relation to the claims as granted and not in relation to a previous set of claims which have already been amended.
Claim 1 according to the MR upheld by the OD has been modified from claim 1 of the patent as granted in that it incorporates the features of dependent claim 8 as granted.
it is thus not possible to contend that the amendments made to claim 1 of the MR as upheld by the OD were not occasioned by a ground for opposition. The same applies to the corresponding amendments to claim 1 of the MR in appeal.
Claim 8 as granted comprised two alternatives which can be considered independently. The Board was of the opinion that the amendment should be considered as a whole, and that an approach limited to each of the alternatives, taken separately, is artificial.
Opponent 1’s view, if accepted, would lead to a prohibition in principle of any amendment to the patent consisting of the introduction of an additional feature incorporating several alternative branches.
The amendment has a direct impact on the assessment of the inventive step for each of the branches of the alternative considered and therefore constitutes a ground for opposition.
Considerations relating to R 80 in T 360/18
Claims 21-23 as granted were claims relating to different uses of the storage-stable, liquid fibrinogen-formulation of claims 1-19. For instance, claim 21 as granted read: ”Use of a fibrinogen formulation according to any of Claims 1 to 19 as product for the treatment of fibrinogen deficiency states”. Claims 21-23 had been objected as infringing the requirements of Art 53(c) that there were relating to “medical methods”.
Those claims were redrafted so that they read “A fibrinogen formulation according to any one of claims 1 to 18 for use….”
The opponent II argued that the amendments made in claims 20 to 22 did not remove the objection to the exception to patentability under Art 53(c). In the case of claim 21, the amendments were unnecessary because they were intended to avoid an objection under Art 53(c) which did not apply to the subject-matter in question. Similar objections applied to claim 22.
The board considers that R 80 only requires that the amendments be prompted by a ground for opposition, which need not be justified, and the amendments need not successfully overcome the ground for opposition. In the present case, it is apparent that the amendments were made in response to the objections to claims 21 to 24 as granted raised by opponent I in its grounds of opposition. They are therefore not objectionable under R 80.
As such, moving the formulation “characterised in that” within a claim as granted would not change the scope of protection and hence would not be occasioned by a ground of opposition. Whether by this change the proprietor’s argumentation on IS becomes easier to formulate appears irrelevant.
The board has made clear in T 273/17 that the requirements of R 80 are to be assessed in relation to the claims as granted and not in relation to a previous set of claims which have already been amended. As soon as a granted claim is limited by the incorporation of a granted dependent claim, it is rather manifest that such an amendment is carried out in reply to a ground of opposition. The same should apply when features are taken from the description to limit an independent claim.
The second aspect which is important is that the amendments need not successfully overcome a ground for opposition, they just have to be prompted by a ground for opposition, and they do not have to be justified.
In a previous publication on this blog about T 732/21 reference was also made to R 80. In this decision the board has held that deleting dependent claims in reply to objections submitted by the opponent and/or by the board, and are thus considered to be filed in reply to a ground of opposition.
On the contrary adding in opposition dependent claims without amending the independent claim they depend on cannot be said to be in reply to a ground of opposition. The same should apply to dependent claims filed during opposition, even if the independent claim would be limited in reply to a ground of opposition.
After all the opposition procedure is not designed to allow the owner to improve or refine his patent. This is the role of R 80.
It is however tempting for an opponent to allege that some claims are offending R 80, as this is a very convenient way to get read of some requests, as such requests do not have to be examined as to their substance..