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.
4 replies on “T 424/21 – Deletion of claims and procedural economy – A very interesting decision”
Daniel, can you add a comment on the point that jumps out at me, that with dependent claims 4 and 5 there was no issue at all with Art 123(2) anywhere in the case, until the Board of Appeal raised it. In these circumstances, to deny the proprietor a chance to save the patent by simply excising these claims strikes me as a level of unfairness to the patent owner which far exceeds any considerations of procedural economy. In all fairness, how could the Board do anything else but allow patentee to delete the offending dependent claims?
Generally, do the Boards of Appeal have no compunction about raising issues never before seen in the case? Do Boards demand that patent owners always include in their “complete case” not only all attacks already on file but also all questions of patentability that a zealous Rapporteur might conceivably raise during the proceedings to appeal the correctness of the OD Decision. I mean, if the Appellant/Opponent has no issue with claims 4 and 5 and Art 123(2) EPC, what business is it of the Rapporteur (in appeal proceedings) to take over the role of the Opponent (here a large pharma undertaking) and write their opposition for them?
At least the Board understands the widespread complaint from outside the EPO, that as things stand, the proliferation of AR’s needed to protect a client is in danger of becoming ever more ridiculous, and counter-productive to “procedural efficiency”. The reputation of the EPO depends on more than efficiency. Justice, and fairness to the parties, are two even more important considerations, don’t you agree?
Dear Max Drei,
While I understand your worry, not to say your irritation, I would like to put the whole situation in a broader context.
I agree with you that, in principle, in opposition and opposition appeal proceedings, the deciding body should remain neutral and not favour any party to the proceedings.
We should however not forget that the aim of opposition and opposition appeal proceedings is to revoke patents which have no reason d’être, or at least to limit them.
Be it in first instance or in appeal, it is only if the opposed patent, especially amended, answers all criteria of patentability under the EPC that it should be maintained. Two exceptions: unity of invention, cf. G 1/91, and lack of clarity in the absence of any amendment to the claims, cf. G 3/14.
The role of an OD
Although it is not prohibited per se, the role of the OD is primarily not bring in prior art which was not found by the opponent. There is however a passage in the Guidelines, D-V, 5, which allows the OD to carry out a further search in exceptional cases and to take into account the result of said search in its subsequent decision. The OD can thus bring in, ex-officio, new prior art, which is extremely rare. I have never seen it.
For the same token it can bring in a ground of opposition even if this ground has not been raised by the opponent. This is also extremely rare. The new ground of opposition has to be manifestly prima facie relevant and should hence potentially lead to revocation of the patent. It could for instance be a problem of sufficiency or added-matter which was not spotted by the opponent.
I did it once for lack of sufficiency as the claim as granted was way too broad with respect to the disclosure. During OP, the opponent just said: now we know why it does not always work! With little amendment in order to overcome the lack of sufficiency, as there was one embodiment which was perfectly disclosed, the patent could be maintained.
The role of a BA
A board of appeal cannot bring in ex-officio a new ground of opposition, cf. G 10/91, but it can act within the legal and factual framework of the opposition. I would like here to remind of Art 111 (1), second sentence: “The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or ….”
The board is thus perfectly entitled to raise an objection which has not been raised by the OD if it thinks it is necessary. In case of an amended independent claim, it can thus happen that due to this change, a dependent claim can infringe Art 123(2). Such a case is not uncommon, even in examination.
I would also like to remind of G 1/99 which deals with the exception to the prohibition of the reformatio in peius. Here it is the board (or the opponent) which becomes active by raising an objection which would lead the patent as maintained in amended form to be revoked as a direct consequence of an inadmissible amendment held allowable by the OD.
In the case at stake, it was thus perfectly legitimate that in the course of its judicial review of the OD’s decision for the board to come up with an objection of added matter if the OD or the opponent had not spotted it. In the present case the rapporteur was not zealous, he simply did his job.
The solution adopted by the board is a very pragmatic one and I hope other boards will adopt it as well. The only issue left would be Art 13(1) RPBA20 if not all the objections would be overcome.
If the board had not admitted the new AR with dependent claims 4 and 5 deleted, I would go as far as to claim that the board would have committed a substantial procedural violation by not giving the proprietor a chance to remedy an objection raised during OP.
It could also happen that the amended independent claim which itself is infringing Art 123(2). See for instance T 1740/16 in which the patent maintained in amended form by the OD was revoked as the amended claim was infringing Art 123(2). Is this decision unjust? I do not think so.
The effect of the RPBA20
I can agree with you that the net effect of the RPBA20 was to transfer the work to the first instance which is not really improving the overall efficiency of the EPO. The proliferation of AR in first instance is more or less inevitable. The aim of the RPBA20 was mainly to help the boards getting read of their backlog.
Justice and fairness
I can agree with you that justice and fairness to the parties are two important considerations, but they are not more important than the conformity of an opposed patent with the requirements of the EPC, especially if it has been amended.
I might have been long, but I hope I could convince you that the situation is not as simple as you thought of it when you wrote your comment. .
Daniel, I must apologise. I mis-read the case. It seems that the Rapporteur flagged up the 123(2) issue in the Board’s Communication of 18 January but the patent owner waited till the 8 April oral proceedings before reacting with an additional Auxiliary Request. That strikes me as unhelpful to procedural efficiency, disrespectful to the Board, somewhat risky and, perhaps, getting close to what we might call “gaming the system”.
Or have I still not understood it fully. You write:
“If the board had not admitted the new AR with dependent claims 4 and 5 deleted, I would go as far as to claim that the board would have committed a substantial procedural violation by not giving the proprietor a chance to remedy an objection raised during OP.”
but the objection was raised months before the OP’s, was it not? If so, I can well understand that the Board might be in two minds, whether at the OP’s to admit the curative AR to the proceedings.
Dear Max Drei,
You are right when you say that the it was a risky game from the proprietor’s side.
Whether during OP or in a communication under Art 15(1) RPBA20, if an objection was only raised by the board, the proprietor has the right to file at least one request.
As here it was after the communication, Art 13(2) RPBA20 (third level of convergence) applies. If the objection is raised during OP, the procedure is the same.
A request had to be admitted under Art 13(2) RPBA20, but even then, it can be considered not admissible under Art 13(1) RPBA20 (second level of convergence) if it gives raise to further objections or does not overcome objections previously raised in the procedure.
There are quite a few decisions of this kind.
The proprietor was lucky as by deleting dependent claims 4 and 5, the remaining claims were allowable. If this would not have been the case, the patent would have been revoked.
To sum it up: the board could act in two ways: either admission under Art 13(2) but not under Art 13(1), or admission under Art 13(2) and discussion on the substance and not allowability.
The board has the discretion to do either ways.
The important aspect for the proprietor when a request is admissible under Art 13(2) RPBA20, is to file a request which is allowable.
Gambling and trying to be as broad as possible at this stage of the procedure could lead to revocation as the proprietor will not get a plurality of chances to keep his patent.
The interplay between Art 13(2) and Art 13(1) RPBA20 is often underestimated. Even if Art 13(2) RPBA20 is not applicable under the transition rules, Art 13(1) RPBA20 has not been excluded by the transition rules. It corresponds to Art 13(1) RPBA07, Art 13(1) RPBA20 being a bit more stringent.