by Daniel X. Thomas
Brief outline of the case
AR1c was filed in response to the board’s communication pursuant to Art 15(1) RPBA20. Hence, its admittance is in principle subject to Art 13(2) RPBA20.
The single method claim of this request is identical to method claim 1 of AR 1b pending during the opposition proceedings and “maintained”
by Daniel X. Thomas
AR 1 to 4 and 6 to 8 were submitted with letter dated 07.11.2019 replacing AR 1 to 4 and 6 to 8 filed with the reply to the statement setting out the grounds for appeal of the opponent.
The proprietor put forward, in relation to these AR, that the filing was prompted by an obvious error by mistakenly including certain features in claim 3 of its previous AR 1 to 4 and 6 to 8 of 17 July 2019 and,
by Daniel X. Thomas
Reminder – Before opposition divisions
It should be kept in mind that before an opposition division combining claims as granted even during oral proceedings is not considered late but is rather considered admissible as the opponent cannot be surprised with such a combination
T 1267/14
A combination of granted claims is admissible and the discretion of the opposition division was correctly exercised.
by Daniel X. Thomas
T 527/17 shows what appears reasonable and advisable in matters of deletion of claims.
In T 527/17 the board admitted the main and the second request but not the first auxiliary request.
Both the main and the second request result from the deletion of claims 7 to 9 (main request) and 6 to 9 (second auxiliary request) from auxiliary request 9A filed with the statement of grounds of appeal
The board held that these amendments do not change the patent proprietor’s case as put forward in its statement of grounds of appeal: they do not raise any new issue and stay within the legal and factual framework established at the outset of the appeal proceedings for the claims remaining on file.
by Daniel X. Thomas
Today 29.04.2022 (after the first post on this topic) my attention has been brought up to a newly published decision T 317/20, itself quoting an older decision T 482/19.
T 482/19
The Board confirmed the decision of the opposition division that the main request (patent as granted) does not comply with Art 123 (2)
AR 1,