Deletion of claims has been discussed on the present blog, but the topic does not seem exhausted.
The present decision shows under which conditions procedural economy can be acknowledged.
It might however not be generally applicable.
Brief outline of the case
The opponent/appellant appealed the OD’s decision to reject the opposition.
The OD considered all the claims as granted as satisfying the requirements of Art 123(2).
As the opposition was rejected, the claims as granted were answering all the requirements of the EPC.
The board held that dependent claims 4 and 5 as granted were infringing Art 123(2).
As AR 1-5 also contained said dependent claims, they could not allow maintenance in amended form.
During OP the proprietor/respondent filed AR 6 in which said dependent claims 4 and 5 were deleted and claims 6 to 8 renumbered accordingly.
The opponent requested the non-admission of AR 6.
The board decided not only to admit AR6 but also maintenance according to said AR.
The board remitted the case to the OD for the adaptation of the description.
What is interesting here is the reasoning as to why AR 6 was admitted under Art 13(2) RPBA20.
The board concluded to the maintenance of the patent on the basis of AR 6 and remitted to the OD for adaptation of the description.
Deletion of claims and procedural economy
Definition of an “amendment of the party’s appeal case”
The board first assessed whether filing AR 6 amounts to an “amendment of the party’s appeal case” within the meaning of Art 13(2) RPBA20.
The board noted that a number of decisions have held that deleting a dependent claim does not represent an amendment to the factual and legal framework of the case within the meaning of Art 13(2) RPBA20 and quoted e.g. T 884/18, Reasons 4; T 914/18, Reasons 4.1; T 995/18, Reasons 2; T 1480/16, Reasons 2.3).
However, in the present board’s view, a party’s case should not be confused with the subject-matter that is presented for consideration of patentability.
On the contrary, a new claim request normally represents a new line of defence against the opposition, and by adding this new line of defence to its case the proprietor has undoubtedly changed its case.
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.
Therefore, the provisions and decisions dealing with the latter (see for example G 3/14, OJ 2015, 102) and the definitions given in that context cannot be applied unchanged.
However, the question of what can be defined as an ‘amendment to a party’s appeal case‘, and with that the question of whether Art 13 RPBA20 is applicable, can be answered in the systematic context of the provisions guiding appeal proceedings (see also J 14/19, reasons 1.4).
In this context, Art 12(3) RPBA20 provides that the statement of grounds of appeal and the reply shall contain a party’s complete appeal case. Accordingly, all requests shall be specified expressly at this stage.
It follows from this that only those requests that have been filed with a party’s statement of grounds of appeal or the reply form part of a party’s appeal case.
As a consequence, a new request filed afterwards with a set of claims that is different to that of the previous requests, is usually to be regarded as an ‘amendment to a party’s appeal case’ within the meaning of Art 13 RPBA20.
Following the systematic context of Art 12(3) and 13 RPBA20, a request in which claims have been deleted compared to the previous requests is therefore a new request and thus usually amounts to an ‘amendment to the party’s appeal case’ according to Article 13 RPBA20.”
A similar conclusion was, for example, reached in decisions T 2091/18, Reasons 4.1 and T 2295/19, Reasons 3.4.5.
Definition of exceptional circumstances
In a second step, the board defined what is to be understood under “exceptional circumstances, which have been justified by cogent reasons”, which allow the request to be admitted into the appeal proceedings.
The proprietor argued that neither the OD’s preliminary opinion nor the decision under appeal had addressed the question of added subject-matter with regard to claims 4 and 5. This point was raised for the first time in the board’s communication under Art 15(1) RPBA20.
The opponent countered that the deletion of the claims changed the focus of the appeal and that the late filing of an amended claim request would give the patentee an unfair advantage. It was the purpose of the new RPBA to “front-load” the proceedings.
For the opponent, the late filing was also detrimental to procedural efficiency because otherwise the appeal could be brought to an end for want of any allowable claim requests. As the objections against claims 4 and 5 had already been present in both the notice of opposition and the statement of grounds of appeal, there could be no “exceptional circumstances” justifying the late filing (citing decision T 172/17).
The board concluded that although the deletion of dependent claims 4 and 5 constitutes an amendment to the appeal within the meaning of Art 13(2) RPBA20, it did not change the factual and legal framework of the appeal. This distinguishes the case from decision T 172/17, in which auxiliary requests 1 to 3, which were not admitted, contained an amendment to independent claim 1 through the insertion of the subject-matter of former dependent claims.
In the case in hand, the deletion of dependent claims 4 and 5 does not affect the objections relating to added subject-matter, sufficiency of disclosure and inventive step for the other claims, all of which had been addressed in the statement of grounds of appeal, the reply and the board’s communication under Art 15(1) RPBA 20.
The opponent was therefore not disadvantaged by the admittance of the request.
This distinguishes the case from, for example, those underlying decisions T 2222/15 (Reasons 29 and 30), T 1569/17 (Reasons 4.3.4) and T 317/20 (Reasons 28 to 44), where the deletion of claims would have substantially shifted the case, thereby giving rise to new issues to be decided upon.
The board did not agree with the opponent that the “convergent approach” of the RPBA20 (see “Table setting out the amendments to the RPBA and explanatory remarks” accompanying the RPBA20), which arguably aims at “front-loading” the appeal proceedings, creates a blanket ban on deleting dependent claims at a later stage of the appeal proceedings.
In this respect, the board interpreted the wording “shall, in principle,” in Art 13(2) RPBA 20 such that it leaves the board at least some discretion in its assessment of the alleged exceptional circumstances.
In presence of a large number of dependent claims
Sensibly applying this discretion appears to be particularly important in technical fields with patents containing a large number of dependent claims.
Generally prohibiting the deletion of dependent claims in reaction to the development of the appeal proceedings would require a huge number of AR to be filed at an early stage, i.e. as early as with the statement of grounds of appeal or the reply, covering all combinations and permutations of possible fall-back positions. This would not be in the interest of procedural economy and cannot be deemed to be in line with the “convergent approach” and the aim and purpose of the RPBA20.
Conclusion of the board
The board concluded that deleting dependent claims 4 and 5 enhances procedural economy as doing so clearly overcomes existing objections without giving rise to any new issues.
In the board’s opinion these are cogent reasons justifying exceptional circumstances as per Art 13(2) RPBA20 (see also T 1857/19, Reasons 1.1, penultimate paragraph).
As it deemed the request admissible under the stringent requirements of Art 13(2) RPBA20, the board considered it unnecessary to further decide whether the less stringent requirements of Art 13(1) RPBA20 were fulfilled.
AR 6 was thus admitted into the appeal proceedings.
The decision is interesting, as following J 14/19, it clarifies again what can be considered as an “amendment of the party’s appeal case”.
Any amendment to a set of claims in appeal is to be considered as an “amendment of the party’s appeal case”.
This is a very pragmatic definition and should be adopted by all the boards.
It will certainly help to combat the proliferation of a huge number of AR when entering appeal.
However there is a proviso.
Beware of Art 13(1) RPBA20
Where other boards might not agree to, is that when an amendment has passed the strict requirements of Art 13(2) RPBA20, it becomes unnecessary to further decide whether the less stringent requirements of Art 13(1) RPBA20 should apply.
According to established case law and practice, when exercising its discretion under Art 13(2) RPBA20 in order to decide on the admission of an amendments of a party’s case, the board may also consider the criteria of Art 13(1) RPBA20. One of these criteria is whether the amendments address successfully the outstanding issues.
See for example T 824/18 (Reasons 4.3) or T 1786/16 (Reasons 3.6, last §).
In T 824/18 (Reasons 4.4 and 4.5), the objection of added matter was not overcome.
In T 1786/16 the board could not see any exceptional reasons justifying the admission of a new request during OP. It was irrelevant for the board that the deletion of an alternative in claim 1 did not lead to any new technical facts and enhanced procedural economy. The proprietor should not have waited to receive the communication of the board under Art 15(1) RPBA to file such an amended request.
Any amendment to a set of claims in appeal is an amendment of a party’s appeal case.
Even if a request, with deleted claims or deletion of an alternative in a claim, might be considered admissible under Art 13(2) RPBA20 it might not be admitted under Art 13(1) RPBA20 if the objections raised in the appeal procedure have not been overcome or if it has not been filed timely when entering appeal or replying to an appeal.
This even more the case when the result of the deletion of claims or of an alternative in a claim changes the factual and legal framework of the appeal under Art 12(3) RPBA20.
The admissibility of requests not filed or withdrawn in first instance can also be queried up-front under Art 12(6) RPBA20, second sentence. As there is no decision of the OD on those requests, it is not possible for a board to review in a judicial manner, cf. Art 12(2) RPBA20, a non-existing decision, even if the amendment consists merely in the deletion of some dependent claims or of an alternative in an independent claim.
At least what is left over in a set of claims or in what is left in a claim should have been subject of a decision of an OD and prima facie overcome the objections raised in the procedure.