CASELAW - reviews of EPO Boards of Appeal decisions

T 532/20 – Deletion/combination of claims – Amendment or not?

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The present patent results from divisional applications EP17178692/3260698 and EP17178696/3260699.

The patent relates to a wind turbine generator with a low voltage ride-through controller and a method for controlling wind turbine components.

The aim is to avoid the destruction of the generator and the inverter in case of low voltages which imply large currents. To this effect, even in case of low voltages, the wind turbine should remain synchronised with the grid.

Synchronisation with the grid is always a delicate operation and it should be avoided to have to carry it out this operation too often.

Brief outline of the procedure

Opponents 2 and 3 appealed the rejection of their oppositions.

Opponent 1 had withdrawn their opposition before the decision under appeal was handed down.

A notice of intervention was filed during the appeal procedure. The intervention was deemed admissible by the board.  

The board decided that the ground of opposition under Art 100(c) prejudiced the maintenance as granted.

AR1-3 as well as AR 4-5 were not allowable as infringing Art 123(2).

AR 8 was lacking clarity as well as AR 6, 7 and 9.

AR A was not admitted under Art 13(2) RPBA21.

The patent was thus revoked.

A request for a referral to the EBA was rejected: “Does the cancellation of one or more granted claims, e.g. the maintenance of a single granted claim, constitute an ‘amendment’ in the sense of Art. 13 RPBA?”

An objection under R 106 was dismissed; the proprietor considered that its right to be heard had not been respected by the rejection of the request for referral to the EBA.

In this post we will deal with the non-admissibility of AR A.

The non-admissibility of AR A

The sole and independent claim according to AR A is a combination of granted claims 1, 4 and 8. All other claims have been deleted, thus also method claims 14-16.

The proprietor’s position

The proprietor argued in essence, that AR A was not an amendment to their appeal case. They reasoned that according to decision G 2/98 (same invention), dependent claims were to be seen as individual claims containing back references as short-form notation.

For the proprietor, AR A corresponded merely to the cancellation of all claims save one granted dependent claim. According to a line of case law, cancelling granted claims was not an amendment within the meaning of Article 13 RPBA21.

The board therefore did not have a discretion that allowed them not to take this claim request into account.

The proprietor also complained that they faced a shotgun approach by the appellants and the infringer.

The board’s position

The board first noted, that decision G 2/98 does not appear to support the proprietor’s contention, but instead decision G 3/14 could be seen as potentially supporting it.

The discussion on the admissibility of AR A, renders the decision interesting in that the board referred to various decisions of the boards in this matter.

First line of case law

Some decisions have considered the deletion

  • of a claim category,
  • of dependent claims or of alternatives within claims

not to be amendments to the appeal case within the meaning of Art 13 RPBA21 in the circumstances at issue

The board referred to T 1480/16, T 2638/16, T 884/18, T 914/18, T 995/18, T 1151/18 and T 1857/19.

Second line of case law

On the other hand, the boards in the cases T 713/14, T 1224/15, T 2222/15, T 1597/16, T 1439/16, T 1569/17, T 853/17, T 306/18 and T 482/19 considered deletions of claims or of alternatives within claims to constitute an amendment of the appeal case.

Evaluation of those lines of case law

The board had a closer look to some decisions and in particular to

  • Reasons 2.3 of T 1480/16
  • Reasons 4 of T 2638/16
  • Reasons 4 of T 884/18
  • Reasons 4.1 of T 0914/18
  • Reasons 2.1 of T 1151/18
  • Reasons 1.1 in T 1857/19

The board found that three conclusions are to be drawn from the analysis of those decisions.

  1. First, whether the deleted claims or alternatives were granted claims did not play any role in reaching the conclusion that certain deletions did not represent an amendment to the appeal case.
  2. Second, and more importantly, none of the above decisions contains the unreserved statement that certain claim deletions were per se not to be considered an amendment. What was clearly essential in the “not an amendment” line of case law was that the deletions did not shift the subject of the proceedings or did not lead to new issues to be examined, but that they represented mere restrictions of the subject of the proceedings.
  3. Third, none of the above decisions even dealt with the deletion of an independent claim and simultaneous maintenance of a dependent claim at all, let alone came to the conclusion that this type of deletion was not an amendment to the appeal case.

The board expressed first that it has reservations concerning the approach of not considering certain deletions as amendments under certain conditions. The board rather agreed with the analysis in reasons 1.1 to 1.5 of decision J 14/19, and reasons 4.1 and 4.2 of decision T 2091/18, according to which any change from the appeal case as defined in Art 12(2) RPBA21 represents an amendment.

The board could not recognise anything in the wording of the Rules of Procedure that would limit the expression “amendment” in such a way as to exclude certain types of claim deletions if they only serve to limit the appeal case.

Such deletions are still changes from the initial appeal case as presented in the statement of grounds of appeal or reply and hence are an amendment in the ordinary sense of that word.

In the board’s view it is dogmatically more consistent to acknowledge that the above mentioned deletions of claims represent an amendment, but that, if this amendment merely has the effect to limit the issues to be examined, this should be a strong criterion in favour of admission, or represent special circumstances within the meaning of Art 13(2) RPBA21.

What has to be examined?

In the normal course of events, the discussion of a claim request can be limited to its independent claim, since this is (normally) the broadest claim.

If an independent claim of a request turns out not to be allowable, there is no need to discuss all the dependent claims of a request, because a request has to be allowable as a whole and not just partially.

In this context, it does not play a role whether the request is directed to the claims as granted.

If the proprietor’s underlying assertion were correct, it would become necessary to discuss each and every granted dependent claim, irrespective of whether the independent claim is allowable.

This is in clear contradiction to the established practice before the Boards of Appeal.

Application to the present case

The proprietor’s assertion that they relied on admission not being a point of discussion for AR A is therefore hardly reconcilable with the everyday practice of appeal proceedings. It is also not reconcilable with the line of case law considering a combination of claims as being an amendment under Art 13 RPBA21.

The behaviour of the proprietor was also criticised by the board. The proprietor presented the opponents, infringer and the board with such a large number of AR, some of them filed only in response to the preliminary opinion of the board and at the OP, that their approach can also be considered as a shotgun approach.

For the board, AR A clearly introduces new issues to be examined into the proceedings.

The present case clearly illustrates that the deletion of a category of claims, here the method claims (granted claims 14-16), may well lead to new issues having to be examined.

If the proprietor had not filed further requests after the board’s communication, added subject-matter of claim 14 may well have been the only issue for which examination would have been necessary to decide the entire case.

Deletion of these claims made it necessary to discuss issues like clarity under Art 84 of AR 6 to 9, which at the time of drafting the preliminary opinion had not been necessary.

This example illustrates why even the “not an amendment” case law requires additionally, that a cancellation does not lead to new issues needing to be examined.

It follows that not even this line of case law can in fact support the proprietor’s argument that AR A had to be admitted.

Comments

The detailed analysis of the board on the question of deletion of claims is to be welcomed.

It is therefore possible to support the board’s conclusion that, in general, any AR which results in the deletion of some claims or is directed to a combination of granted dependent claims as new independent claim, filed after the statement of grounds of appeal or the reply thereto, will be an amendment of the party’s appeal case within the meaning of Art 13 RPBA21.

Decision J 14/19, and reasons 4.1 and 4.2 of decision T 2091/18 are clearly two very important decisions when it comes to define what can be considered an amendment under the RPBA21.

In order to have a chance to be admitted, such a deletion/combination of claims should resolve all the issues raised up to then in the procedure. But even this is not an absolute guarantee for their admissibility, especially when it is filed after a communication of the board or an annex to the summons. Not only, there should be exceptional circumstances which have to be justified with cogent reasons by the proprietor concerned

The situation is less critical in opposition, as a combination of granted claims is, in principle, never late as the opponent cannot claim to be surprised by such a combination, e.g. T 1267/14. As long as there is no added subject-matter, it should be admitted, e.g. T 1683/19.

Deleting claims in opposition always results in less work for the division. It should however not be forgotten that what has been deleted in opposition and reintroduced in appeal is seen as amendment during appeal procedure, cf. Art 12(6) RPBA21, cf. first level of convergence.

In appeal, filing a combination of granted claims does not necessarily lead to its admissibility. All three level of convergence might be a hindrance to their admissibility. This is even more so, when it is a combination of claims of various AR filed when entering appeal. Then the second and third level of convergence are a clear hindrance to their admissibility.

https://www.epo.org/law-practice/case-law-appeals/recent/t200532eu1.html

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