Wednesday, 27 January 2010

T 323/07 – No Tidying Up in Post-Grant Amendments

The present decision reaffirms what the Boards had already made clear under the EPC 1973: amendments in opposition proceedings must be occasioned by a ground for opposition.

[...] The sixth auxiliary request consists of six claims, whereby Claim 1 corresponds to Claim 5 as granted. Claims 3 and 4 are new dependent claims. [5.1]

Claim 4 refers - inter alia - back to Claim 3 and thus encompasses a manufacturing method specifying the production of a (meth)acrylic acid homopolymer and requiring the method to comply with both conditions (1) and (2) set out in Claim 1 of the sixth auxiliary request.

As pointed out by [one of the opponents] at the oral proceedings before the board, there is no basis in the application as filed for this combination of features. It may well be that, as argued by the appellant, each individual feature has a basis in the application as filed, namely in the passages on page 16 of the application as filed […] and in Claim 5 as granted and Claim 5 as originally filed, respectively, […]. However, the content of the application as originally filed must not be treated as something in the nature of a reservoir from which it would be permissible to combine different individual features pertaining to preferred embodiments in order to create artificially a particular new embodiment, unless the application as originally filed itself suggests such a combination of features. In the present case, however, the combination of features as now claimed in Claim 4 is neither explicitly nor implicitly suggested by the application as originally filed. Therefore, Claim 4 of the sixth auxiliary request contravenes A 123(2). Consequently, for this reason alone, the sixth auxiliary request has to be refused. [5.2]

Furthermore, it is conspicuous to the board that dependent claims 3 and 4 have no counterpart in the claims as granted. R 80 states that “Without prejudice to R 138, the description, claims and drawings may be amended, provided that the amendments are occasioned by a ground for opposition under A 100, even if that ground has not been invoked by the opponent.” It is in principle not conceivable which ground of opposition could be overcome by filing new dependent claims. The purpose of R 80 is certainly not to tidy up the claims in order to improve the proprietor’s position in contingent national proceedings. Hence, Claims 3 and 4 of the sixth auxiliary request contravene R 80, which constitutes another reason why the sixth auxiliary request has to be refused. [5.3] 

To read the whole decision, click here.