The patent relates to an electrical apparatus for the generation, transmission, distribution and/or usage of electrical energy, and to a method for determining an optimum amount of an adsorber for the adsorption of water and optionally further contaminants in such an electrical apparatus.
Brief outline of the case
The proprietor appealed the OD’s decision to revoke the patent as, inter alia, none of the independent claims of the requests on file involved an IS in view of E1= WO 2012/038442. E1 was not mentioned in the ISR established by the EPO.
The board decided that subject-matter of claims 1, 12 and 19 of the MR did not involve an IS in view of E1. The same applied to AR 1 and AR 3 to 6 as well as to AR 7 to 12.
AR 2 was not admitted under Art 12(6) RPBA, first sentence, as it was identical to AR7 not admitted by the OD.
AR 6.2 was not admitted under Art 13(2) RPBA. The same applied to AR 8.2 and 12.2
The subject-matter of AR 13 was excluded from patentability as it represented a mental act.
After appeal, the patent was thus still revoked, but in part, for different reasons.
The case is interesting in that, in AR 6.2, some claims were deleted.
The board considered the deletion made in AR 6.2, filed during the OP before the board, to be an amendment. The board further decided not to take this amendment into account under Art 13(2) RPBA.
The proprietor’s point of view
The proprietor argued that the present deletion of independent claims from a request did not represent an “amendment” within the meaning of Art 13 RPBA, in particular since the deletion was merely a waiver serving to limit the appeal case.
The proprietor made reference to decisions T 565/16, T 1480/16, T 995/18, T 1151/18 and T 1597/16. His view would imply that the board does not have a discretion to disregard AR 6.2. which would then automatically be part of the appeal proceedings according to Article 12(1,a), (2) and (4), RPBA.
The board’s analysis of the case law
In T 1480/16, the deletion of all claims of a category was not considered to be an amendment because in that case this did not change the factual and legal situation or raise any new issues to be discussed.
The reasoning in the decisions in T 995/18, reasons 2, and T 1151/18, reasons 2.1, on this point is similar to that of the decision in T 1480/16.
Also the reasoning in decision T 1597/16 seems to hinge upon the fact that no new factual and legal situation was created by the deletion of an alternative within an independent claim, see reasons 4.4.1.
Decision T 565/16 does not contain any reasoning to support its view that certain claim deletions are not amendments.
The board was not persuaded by the general approach in these decisions to what it takes to qualify as an “amendment”, nor by the way in which the proprietor applied that jurisprudence to the present case.
Two lines of case law exist when it comes to deletion of claims
In further contrast to some of these early decisions applying the RPBA, the present board considered that there can be no discretion unless there is an amendment.
The board also noted in respect of the decisions invoked by the proprietor that an approximately equal number of further decisions, listed in the CLBA, V.A.4.2.2 d), takes the contrary view that the deletion of claims does represent an amendment to the appeal case.
Therefore, the present board was persuaded by this second line of jurisprudence because it cannot recognise anything in the wording of the RPBA that would restrict the term “amendment” to exclude the deletion of claims, including when allegedly or actually only serving to limit the appeal case. The decisions invoked by the proprietor give no explanations to the contrary.
In particular, the board could not recognise any link in the wording of the RPBA between the question as to whether a change to the appeal case is an amendment within the meaning of the RPBA and the influence of such change on procedural economy.
On the contrary, whether it is detrimental, neutral or beneficial to procedural economy is an express criterion in the RPBA only at the next step, in the exercise of discretion after a change to the appeal case has been qualified as an amendment, cf. Art 12(4) and 13(1), fourth sentences, RPBA. Thus, the ordinary meaning of the term “amendment” in its context is not concerned with procedural economy. In other words, the impact on procedural economy is not a criterion when assessing whether, at all, there is discretion.
The board’s decision
The board was thus not persuaded by the way the proprietor applied the cited jurisprudence to the present case. Contrary to the factual situation underlying these decisions, in the present case the deletion of the group of claims beginning with independent apparatus claim 12 introduced new issues that needed to be examined.
Before the filing of AR 6.2, there was no claim request on file which made it necessary to examine the subject-matter of claim 1 thereof. AR 5 and 6 contained a claim with identical subject-matter as claim 1 of AR 6.2.
However, there was no need to examine this subject-matter separately because these requests were not allowable anyhow due to the presence of further independent claims 12 and 19. These claims were unallowable for the same reasons as higher ranking AR. Claim 1 according to AR 7 and 8 contains all limitations of claim 1 of AR 6.2 and a further limitation. However, also these requests were unallowable due to the presence of further independent claims that had already been dealt with in the context of the higher ranking requests.
This change to the proprietor’s appeal case would therefore have shifted the focus and discussion to issues which, up to that point, had not needed to be examined.
If the proprietor’s view that the late deletion of claims at issue does not constitute an amendment were correct, it would follow that a board does not have a discretion as to its admittance. As a consequence, to avoid any shift of the focus and discussion to unexamined issues, such a board would be prompted to examine every claim of every request filed in due time with the statement of grounds of appeal or the reply.
This would be strikingly contrary to the primary object of appeal proceedings to review the appealed decision in a judicial manner under Art 12(2) RPBA. This could not have been the legislative intent.
For these reasons, the deletion of claims made in AR 6.2, filed at the OP before the board, constitutes an “amendment” within the meaning of Art 13 RPBA.
Main criterion to apply
In deciding whether to take the amendment into account, the main criterion is whether there are exceptional circumstances.
The deletion of claims is not excluded from the scope of the term “amendment” in Article 13 RPBA 2020.
The impact of a particular change to the appeal case on procedural economy is not a criterion for deciding whether that change is an “amendment” within the meaning of Art 13 RPBA.
Rather, the impact on procedural economy is a criterion when a board, at the next step of the assessment, exercises its discretion to decide whether a change that has already been qualified as an “amendment” is to be taken into account.
In favour of considering AR 6.2, the proprietor argued that the preliminary opinion of the OD concerning granted independent apparatus claims 1 and 12 was positive for it. Thus, there had been no need to amend the claims up to the OP before the OD.
This argument neglects that it follows from the conclusion in point 8.2 of the decision under appeal that the subject-matter of claim 12 according to AR 5 to 8 also did not involve an IS. If the proprietor had wanted to pursue AR 6.2, it should have filed this request with the statement of grounds of appeal, at the latest, and not waited until the OP before the board. What the appellant has presented are no exceptional circumstances justifying the admittance of AR 6.2, let alone any cogent reasons under Art 13(2) RPBA.
The main criterion can, at this stage of the appeal proceedings, be complemented by the criteria of Art 13(1) RPBA. The shifted focus and discussion to new issues that would follow, if AR 6.2 were to be considered, would entail more work for all involved to the detriment of procedural economy.
For these reasons, AR 6.2 was not taken into account.
Deletion of claims = amendment
The present decision confirms that the deletion of claims in some requests is to be considered as an amendment to the proprietor’s appeal case. It is difficult not to agree with this position.
Exceptional circumstances and not procedural economy is the criterion to apply
The decision confirms that procedural economy is not the main criterion for deciding admissibility of requests in which claims have been deleted.
For late filed AR, especially during OP before the board, the main criterion is whether there are exceptional circumstances justified by cogent reasons. Procedural economy only comes after applying the main criterion.
Application of the third and second level of convergence
That when applying Art 13(2) RPBA, the criterion set out in Art 13(1) RPBA may also be applied is an acquired fact in view of the corresponding case law. As examples, see T 824/18 and T 1832/18. Even if a request might be admissible under Art 13(2) RPBA, the board still has the discretion not to admit it under Art 13(1) RPBA, it it gives raise to new objections.
Appeal is not the continuation of opposition
That an OD gives a preliminary opinion which appears positive to requests pending for it, has no effect on the appeal procedure is manifest. It is also difficult not to agree with this position.
Requests with deleted claims
If requests were not allowable, the mere fact of deleting in those requests non-allowable claims, is not enough to render new requests, only consisting of the remaining claims, admissible.
Such requests are only admissible if a decision on the remaining claims is those requests has been positive in first instance and confirmed by the board. Then procedural economy applies in full.
A bit more flexibility is wished
That a proprietor should at the latest, file new requests, even if in those some not-allowable claims are deleted, when entering appeal does is manifest in view of the valid RPBA. In the present case, the proprietor was simply too late.
Waiting to enter the second or even the third level of convergence to file requests is way too risky. The corresponding procedural case law under the valid RPBA is very clear in this respect.
However, if there was no necessity to discuss some claims in first instance, a more lenient attitude in matters of admissibility should be brought to light by the boards. To require from the proprietor to deal with claims not discussed in first instance when entering appeal, is going too far. As those claims were not part of the discussions in first instance, it is difficult to say something about those. That a board can take a different view than the first instance is not at stake. It is simply not reasonable, just for the comfort of the boards, to deal with such claims. Formalism has limits.
The same should apply for the opponent, when there was no necessity to discuss the substance of some claims in first instance. Claiming that the opponent has to deal with those claims, without even knowing whether they will be pursued in appeal is also going too far. As they were not part of the discussions in first instance, it is difficult to say something about those claims. That a board can take a different view than the first instance is also not at stake. It is simply not reasonable, just for the comfort of the boards, to deal with such claims. Formalism also has limits in this situation.
When claims had not been discussed in first instance, but are taken on board in later requests, the boards have always the possibility to remit, provided that corresponding requests are filed when entering appeal. This possibility, clearly within the discretion of the boards under Art 11 RPBA, should be used more liberally. After all, when a board sets aside a decision on lack of N, lack of sufficiency and added matter, remittal is the standard procedural consequence.
This is also the case when the board decides that N is given, the board should allow the opponent to continue with IS and not block the discussion for procedural reasons as it happened in T 1242/21, commented on this blog. Here again, the board might not want to discuss IS, but then it should remit.
After remittal, the likelihood of a new appeal is high. This is however not a reason to stifle discussion before it has begun on the altar of production/productivity of the boards.