T 993/07 – Stay Focused

This decision deals with the question of which amendments are acceptable in opposition proceedings. It gives a nice overview over the case law developed by the Boards in this respect.

[1.1] R 80 (previously R 57a) stipulates that “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 a lex specialis for amendments during opposition proceedings, analogous to R 137 (previously R 86) for amendments during examination proceedings. These rules place limitations on the right to amend the patent specification and the patent application, respectively.

[1.2] The board interprets R 80 such that in opposition proceedings the proprietor’s right to amend the patent, for example the claims as granted, is limited to making amendments in order to overcome an objection based on a ground for opposition as specified in A 100, thereby possibly avoiding a revocation of the patent.

In the board’s view, this interpretation is in accordance with the general principles concerning opposition proceedings as set out by the Enlarged Board of Appeal (EBA). More specifically, the purpose and intention of opposition proceedings is to give the public the opportunity to challenge the validity of the patent in question (G 1/91 [4.2]; G 9/93 [3]). The opposition procedure is not designed to be, and is not to be misused as, an extension of the examination procedure (G 1/84 [9]). Rather, opposition proceedings are conceived as a simple, speedily conducted procedure in which, on the one hand, relevant objections to patentability should be given appropriate consideration and, on the other hand, a decision on the validity of the patent should be reached as quickly as possible, in the interests of both parties (G 3/97 [3.2.3]; G 2/04 [2.1.4])

[1.3] In line with the above interpretation of R 80, the board notes that it is common practice that a proprietor is allowed to make amendments to the patent specification, in particular in order to overcome an inventive step objection against the subject-matter of an independent claim, by adding one or more features to the independent claim, either by combining the claim with one or more of the dependent claims as granted or by taking features from the description.

[1.4] Following a consistent line of decisions, including T 674/96 [3.10] and T 223/97 [2], it would however contravene the requirement of R 80 and the above principles set out by the EBA if a patent proprietor were allowed to amend the claims as granted during opposition proceedings by adding one or more dependent claims, since the addition of one or more (truly) dependent claims leaves the subject-matter of the independent claim to which they refer unchanged and is therefore not in order to overcome an objection based on a ground for opposition against the claims as granted.  

For example, if the subject-matter of the independent claim is held to involve an inventive step, this would necessarily also apply to the subject-matter of any of its dependent claims, whereas if the subject-matter of the independent claim is held to lack an inventive step, the request as a whole is not allowable, i.e. irrespective of the addition of dependent claims.

[1.5] In the board’s view, analogous considerations apply to the case in which one or more further independent claims are added to an opposed independent claim as granted, if the latter claim is maintained, either as granted or in amended form, since the addition of one or more further independent claims leaves unimpaired the question of whether or not arguments submitted by the proprietor and/or amendments made to the opposed independent claim overcome an objection based on a ground for opposition against that claim.

The above case is to be clearly distinguished from the case in which the proprietor amends the claims as granted by completely deleting the opposed independent claim, e.g. claim 1 as granted, in order to overcome an objection based on an opposition ground against that claim, and by explicitly including all of the features of the deleted independent claim in each one of the dependent claims as granted which were dependent on the deleted claim. In this case, the amendments to the dependent claims, which are thereby reformulated as independent claims, are merely in consequence of the complete deletion of claim 1 (see also T 1416/04 [5.1]).

[1.6] [The patent proprietor] argued that R 57a EPC 1973 (now R 80) did not require that an amendment must provide a contribution to avoid the revocation of the patent and, hence, did not prohibit the presentation of several independent claims in lieu of a single, opposed independent claim, where the respective differences between the several claims and the single claim could be seen as being occasioned by grounds for opposition. It argued that R 57a could simply be interpreted as prohibiting amendments which fall outside the legal framework of the opposition, e.g. amendments that merely tidy up dependent claims unaffected by the opposition.

Further, [the patent proprietor] argued that the rights of the proprietor would be unduly curtailed if the proprietor’s options were limited to either claiming the specific embodiments of the granted dependent claims or a single embodiment taken from the patent specification, since he would thereby be forced to accept a sub-optimal strategy for overcoming the opposition, instead of saving the commercially relevant scope of the patent by a parallel presentation of several specific embodiments disclosed in the specification. For example, where the parallel solutions screws, bolts or rivets, in lieu of “fastening means”, disclosed in the patent specification constituted the commercially most viable amendments, the option of choosing solely one of these solutions was unappealing, as it would open the door for competitors to pursue the other parallel solutions, even though these solutions fell within the scope of the granted patent, were originally disclosed, and could have been claimed had the proprietor been aware of the necessity to claim such solutions prior to grant. Such awareness could not have been expected if a so-called “accidental” anticipation was cited for the first time in opposition proceedings.

[The patent proprietor] also noted that after grant, i.e. during opposition proceedings, divisional applications could not be filed.

[1.7] The board does not find these arguments convincing. The opposition procedure is not designed to be an extension of the examination procedure, see point [1.2] above. In examination proceedings, it is the applicant’s task and responsibility to draft the claims on the basis of which the grant of a patent is requested, A 78 and A 113(2). This involves, inter alia, determining for which matter protection is to be sought, how many independent claims and of which category are required in order to adequately define the matter to be protected, and whether or not dependent claims are to be included and, if so, which particular embodiments these claims should be concerned with. The latter, in turn, involves considerations as to the commercial relevance of each of these embodiments. As to the number of dependent claims, additional costs caused, such as claims fees and translation costs, are to be taken into account as much as the question of whether or not dependent claims are important as valuable fall-back positions for the case that the corresponding independent claim is found unallowable, for whatever reason, in opposition proceedings or national revocation proceedings. It also has to be considered whether or not it is necessary to file separate patent applications, e.g. in parallel or by way of divisional applications, in order to obtain exclusive rights for different aspects of the invention as comprehensively as possible.

In the board’s view, for the same reasons as set out above, see point [1.2], opposition proceedings are not to be understood as an opportunity for the proprietor to, fix any, from his perspective, shortcomings in the patent, such as an insufficient number of independent and/or dependent claims in order to define all commercially valuable embodiments. The fact that the addition of one or more independent and/or dependent claims may improve the fall-back positions in any future revocation proceedings before a national court is clearly not the purpose and design of either R 80 or the opposition procedure, as set out above.

The board observes that, whereas R 80 is a lex specialis for amendments during opposition proceedings, a limitation procedure pursuant to A 105a, which offers the proprietor the opportunity to limit the patent by amending the claims, is not subject to the same requirement as set out in R 80.

As to the example of replacing “fastening means” by “screws, bolts or rivets”, the board notes that R 80 does not prohibit making amendments in opposition proceedings to an opposed independent claim, e.g. in order to overcome an inventive step objection, by replacing a general term in the claim by a number of specific alternatives disclosed in the specification. It is however noted that the examination as to whether or not the amendments comply with the requirements of A 84 (see G 9/91 [19]) that the claims shall be clear and, both individually and in their entirety, be concise, is a different matter. The examination of these requirements clearly depends on the specific facts of the case, cf. T 79/91 [2.2-2.5], and T 246/91, point 7 (both not published in OJ).

[1.8] In connection with the interpretation of R 57a EPC 1973 (now R 80) [the patent proprietor] referred to decisions T 1138/02, T 181/02, T 223/97, T 610/95, G 1/84, G 9/93, and G 1/05.

It was argued that T 1138/02 and T 181/02 were inconclusive as regards the presentation of numerous independent claims in lieu of a single, opposed independent claim. Further, it was argued that T 610/95 misinterpreted the wording of R 57a EPC 1973.

The board notes however that, even if [the patent proprietor’s] understanding of T 1138/02, T 181/02 and T 610/95 were followed, on the facts of the present case, this would not affect the board’s own considerations as set out above at points [1.1-1.7]. In any case, the board is of the view that the considerations made in T 610/95 are fully in line with the considerations set out above at points [1.1-1.7], see T 610/95 [2.1-2.2], the relevant passages of which read as follows:

“The EPC does not guarantee a patent proprietor the right to have proposed amendments incorporated in opposition or subsequent appeal proceedings.”

“Opposition proceedings are not an opportunity for the patentee to propose amendments to the text of a patent for purposes which are not clearly related to meeting a ground of opposition raised under A 100. In particular, the addition of claims to the text of the granted patent during opposition or subsequent appeal proceedings, which have no counterpart in the granted version of the claims of the patent in suit, cannot normally be regarded as an attempt to respond to an objection under A 100 and is, therefore, not admissible (see T 295/87, [end of 3]).” and

“In this respect reference should also be made to decision G 1/84 [9]. In that decision the EBA made it clear that the opposition procedure is not designed to be, and is not to be misused as, an extension of the examination procedure. It would, in the board’s opinion, contravene those principles set out in G 1/84, if it was considered admissible to amend the text of a granted patent during opposition proceedings, while maintaining the sole independent claim under opposition, by incorporating an additional new independent claim which as such has no counterpart in the granted patent and, accordingly, was neither the subject of substantive examination in the examination procedure nor open to opposition owing to its non-existence in the granted patent.”

As to T 223/97, [the patent proprietor] noted that two independent claims directed to respective specific embodiments covered by the independent claim as granted, in lieu of a single opposed independent claim, were allowed.

The board notes however this relates to an auxiliary request which was considered in T 223/97, in which two independent claims were filed as a replacement of claim 1 as granted, without any further claims being maintained or filed. In the present case, the facts are significantly different. According to the main and first auxiliary requests, claim 1 as granted is not deleted but amended by the inclusion of further features from the description, whilst nineteen, respectively nine, independent claims, are added […]. These requests are more similar to the main request considered in T 223/97, which included, in addition to an amended independent claim 1, two new independent claims. As to this request the board held that (see T 223/97 [2.2]):

“Il est clair que l’ajout de deux nouvelles revendications indépendantes ne saurait être recevable puisque cette addition, qui ne modifie en rien le sort de la revendication 1 mise en cause, ne saurait être considérée comme une restriction apportée à la revendication 1 elle-même pour répondre au motif d’opposition invoqué à son encontre.” (*)

In the present board’s view, this consideration is fully in line with those set out above at points [1.1] to [1.7] with reference to G 1/84 and G 9/93.

G 1/05 referred to by [the patent proprietor] is not concerned with the interpretation of R 57a EPC 1973 (now R 80) but with amendments in examination proceedings concerning divisional applications. With reference to the travaux préparatoires as regards earlier proposals for R 57 [the patent proprietor] argued that the chosen formulation of R 57a (now R 80) differed significantly from the stricter wording of earlier proposals for R 57. In the board’s view, however, even if this argument were accepted, it would not affect the board’s interpretation of R 80 (previously R 57a) as set out above.

[1.9] The arguments submitted by [the patent proprietor] as to how R 80 should be interpreted are therefore not convincing.

(*) “It is clear the addition of two new independent claims could not possibly be admitted, as this addition, which does not change the fate of impugned claim 1 could not be considered as a limitation of claim 1 itself in response to the ground of opposition that was raised against it.”

If you wish to download the whole decision, just click here.