[3.1] The [opponent] objected to the admissibility of the [patent proprietor’s] request. The final form of the claims of this request was filed in the oral proceedings (OPs) but was based on a request - the admissibility of which was also contested - filed by the [patent proprietor] in response to the board’s communication. The [opponent] submitted that the change of category from claims directed to a horn antenna according to the patent as granted to claims concerning a specific use of a horn antenna according to the present request came very late in the opposition appeal proceedings and constituted a significant change of the matters in dispute. The [patent proprietor] had had ample opportunity to present use claims in the course of the opposition proceedings. It was however a generally observed principle that the purpose of appeal proceedings was predominantly to review the validity of the decision rendered by the first instance and that the factual framework of appeal proceedings should not significantly differ from that of the proceedings in the first instance. Therefore, a party to appeal proceedings was not allowed to significantly change the matters in dispute. In accordance with decision G 9/91 of the Enlarged Board of Appeal and decision T 240/04 the appellant’s present request should thus not be admitted into the proceedings under Article 13(1) RPBA.
[3.2] The [patent proprietor] pointed out that a request directed to use claims had in fact already been filed during opposition proceedings. However, in order to get other amendments considered in OPs before the opposition division (OD) the [patent proprietor] had felt obliged to drop such claims. The return now to a request directed to use claims was motivated by the board’s critical assessment of the patent as given in the communication annexed to the summons to OPs. At any rate, it was disputed that the limitation of the scope of protection to a specific use could be considered a significant change in the factual framework. Moreover, given the fact that the claimed use formed part of the definition of the horn antenna according to the claims as granted, the new request did not include an element of surprise to the board and the other party.
[3.3] Article 13(1) RPBA stipulates that “Any amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the Board’s discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.”
Article 13(3) RPBA complements this by stating that “Amendments sought to be made after OPs have been arranged shall not be admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the OPs.”
[3.4] In the Board’s view, the change from a claim directed to a “Fluid-level-measuring horn antenna for downward facing operation in an atmosphere causing condensation on the horn antenna and for the transmission of microwaves” (claim 1 of the patent as granted) to a claim concerning the “Use of a fluid-level-measuring horn antenna in a tank for downward facing operation in an atmosphere causing condensation on the horn antenna and for the transmission of microwaves” (present claim 1) amounts to a substantial limitation of the scope of protection but does not constitute a substantial change of the factual framework of appeal proceedings. For this reason, decision G 9/91 and the ensuing case law of the boards of appeal (such as T 240/04 which was referred to by the respondent) which define the extent to which the factual framework may be changed in appeal proceedings are not applicable to the present case.
On the other hand, according to the criteria of Articles 13(1) and (3) RPBA, the appellant’s present request is indeed late-filed. However, the specific use of the antenna which is now claimed already formed part of the antenna’s definition in claim 1 of the patent as granted. Thus, although this use did not constitute a limiting feature for the antenna as such, the present limitation does not increase in any manner the complexity of the case nor does it raise issues which cannot reasonably be dealt with during the OPs. This is even more so the case as, throughout the opposition and appeal proceedings, the appellant’s argumentation consistently relied on the specific use of the antenna as an inventive aspect of the claimed subject-matter. Furthermore, the request including the change of category to a use claim was presented well before the date of the OPs. The further amendments made to present claim 1 during the OPs concern the definition of the geometry and mutual arrangement of antenna elements which, according to the context of the original disclosure, are functionally decisive for successfully overcoming the problem to be solved. These amendments respond to a number of objections under A 84 EPC 1973 and A 123(2) which came up during the OPs. For these reasons, after discussion with the parties to the proceedings, the Board decided to exercise its discretion in favour of the appellant and thus to admit the [patent proprietor’s] sole request into the appeal proceedings.
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