Deletion of claims from a claim request is an amendment

Patents Case Law

The proprietor (P) in appeal based a new auxiliary claim request upon an earlier request from the opposition proceedings, yet deleted part of the claims. The Board discussed the divergence in the jurisprudence of the Boards of Appeal (BoA) concerning the notion of an "amendment" within the meaning of Article 12(4) RPBA 2020 and concluded that the deletion of claims is an amendment. Since no cogent reasons were provided for the late submission, and the amendment was not prima facie resolving the defects, the claim request was not admitted into the proceedings.

Case: T 2360/17

A party's appeal case is directed to the "requests, facts, objections, arguments and evidence on which the decision under appeal was based", and not based on the “factual and legal framework of the case" or "the subject of the discussions", or whether it leads to a "re-weighting of the subject of the proceedings".
Deletion of further claims from a claim request constitutes “an amendment”.

Background

In this case, the Opposition Division had decided to maintain the patent in an amended form, on the basis of an auxiliary request 2a. Both the Opponent (O) and P lodged an appeal, O requesting that the appealed decision be set aside and that the patent be revoked, and P requesting that the appealed decision to be set aside and the patent be maintained as granted.

During the oral proceedings in appeal, P withdrew its appeal and requested that the patent be maintained on the basis of auxiliary request 2a as maintained by the Opposition Division (main request), or that the patent be maintained as amended on the basis of auxiliary request 2b (first auxiliary request), or on the basis of auxiliary request 1c (second auxiliary request). Both auxiliary requests 2b and 1c had been filed in response to the preliminary opinion, i.e., the communication of the Board under Art. 15(1) RPBA 2020.

Claim requests

Claim 1 of the main request involved a method claim comprising four features, which were labelled as features (a), (b), (c) and (d) by the Board. Claim 1 of auxiliary request 2b differed from claim 1 of the main request by an amendment involving only feature (c). Claim 1 of auxiliary request 1c comprised the same amendment involving feature (c), and in addition included an amendment involving feature (d).

Decision on the main request

The Board concluded that the main request was not allowable because of an unallowable intermediate generalization associated with feature (d), i.e., a violation of Art. 123(2) EPC. Since the claims according to auxiliary request 2b also contained the same feature (d), the first auxiliary request was deemed not allowable as well. The single method claim of auxiliary request 1c had a further amendment of feature (d) and was aimed at resolving the Art. 123(2) EPC issue, yet the Board questioned its allowability.

A party’s appeal has to be directed to the “factual and legal framework” or the “subject of the discussions

Admissibility of request 1c

Auxiliary request 1c was only submitted in response to the preliminary opinion, and therefore its admittance was in principle subject to Art. 13(2) RPBA 2020. However, the single method claim of auxiliary request 1c was identical to method claim 1 of auxiliary request 1b, which was “"maintained" without further substantiation with a letter dated 15 May 2018.” The other claims of auxiliary request 1b, i.e., claims 2 to 12, among them apparatus claims including features not included in method claim 1, had been deleted in auxiliary request 1c. According to the Board:

“[T]the crucial issue here is [therefore] whether the filing of the claim set according to auxiliary request 1c constitutes an "amendment" of the proprietor's appeal case within the meaning of Article 12(4) in conjunction with Article 12(2) RPBA 2020.”

The Board discussed the divergence in case law as to whether or not deletions of claims in certain claim requests amount to an amendment:

“One strand of jurisprudence holds that, if the deletions of claims in a previously filed claim request do not change the "factual and legal framework of the case" or "the subject of the discussions" and does not lead to a "re-weighting of the subject of the proceedings", such deletions are not to be considered an "amendment" within the meaning of Article 12(4) RPBA 2020 (see as representatives of that strand e.g. T 1480/16-3.2.01, T 1857/19-3.3.05 or T 2201/19-3.5.05; also labelled "non-applicability approach"). According to another strand of jurisprudence, any deletion of claims from a previous set of claims amounts to an "amendment" of the applicant's or proprietor's appeal case and thus confers discretion to a board to disregard the claim request at issue. This discretion has then to be exercised in a reasonable manner according to a so-called "two-step examination approach" (see as representatives of that strand e.g. J 14/19-3.1.01, T 494/18-3.3.06, T 2091/18-3.2.05, T 2920/18-3.3.03).”

The Board of this case followed the second strand because it considered that it cannot be deduced from the wording of Art. 12(2) RPBA 2020, or from the explanatory remarks to the RPBA 2020 that a party’s appeal has to be directed to the “factual and legal framework” or the “subject of the discussions”. Instead, according to the Board, the provisions simply require that “a party's appeal case is directed to the "requests, facts, objections, arguments and evidence on which the decision under appeal was based".

As a consequence, the Board found that the submission of Auxiliary Request 1c constituted an "amendment" to P’s appeal case, and that Art. 13(2) RPBA 2020 applied here. Art. 13(2) RPBA 2020 states that any amendment made to a party's appeal case after notification of a summons to oral proceedings shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.

In the current case, P did not provide any evidence of exceptional circumstances, and in its motivation for the request they referred to their arguments previously submitted during the opposition proceedings in relation to claim request 1b. The Board therefore considered that P failed to provide "cogent reasons" for the belated submission of auxiliary request 1c.

In addition, the Board quickly checked the content of feature (d) in the claim and concluded that it did not see how it would solve the Art. 123(2) EPC objection. The Board therefore concluded that auxiliary request 1c was not prima facie allowable under Art. 123(2) EPC and decided to exercise its discretion to not admit auxiliary request 1c into the appeal proceedings.