T 1679/09 – When One Becomes Two

Recently, a reader enquired on case law concerning R 80. Well, here is a recent decision dealing with a multiplication of independent claims in the course of opposition proceedings.

One landmark decision on this topic was T 223/97 [2.2], where Board 3.2.1 stated (my translation of the French original):

“According to a principle set forth in decision G 1/84 [9] opposition proceedings are not to be considered an extension of the examination proceedings and is not to be misused as such. This means that only the independent claims challenged in the opposition may be amended, provided that this amendment is a response to the grounds for opposition invoked, in particular lack of patentability, and also satisfied the requirements of the EPC and in particular the double requirement expressed in paragraphs 2 and 3 of A 123. It is clear that the addition of two new independent claims cannot be admissible because this addition, which does not have any effect on the fate of claim 1 that has been challenged, cannot be considered to be a limitation of claim 1 itself in response to a ground for opposition that has been invoked against it.

If claim 1, as here, covers two particular embodiments, the patent proprietor may as a response to the lack of patentability, limit [the patent] to those two embodiments and, consequently, file two independent claims each of which protects one of those two embodiments. If, as in the auxiliary request, the main claim that has been challenged is deleted, the two new independent claims replacing it constitute a limitation of this main claim because only two particular embodiments are still protected. As a consequence, these claims are admissible provided that they satisfy the double condition of A 123(2) and (3).

However, if, as in the main request, the main claim, which already covers the two particular embodiments is essentially maintained in its entirety, the introduction of these two new requests (3 and 4) violates the well-established principle mentioned above, because then the addition of those two new claims cannot be considered to be a limitation of the main claim itself in response to the ground for opposition, i.e. the lack of patentability invoked against it.

Moreover, the requirement of concision of the claims pursuant to A 84 [EPC 1973] pleads against the introduction of superfluous new claims that do not improve the fate of the European patent under consideration. Therefore, [the Board] has to conclude that the independent claims 3 and 4 that have been introduced in the course of the opposition proceedings are not admissible.” (my emphasis)

In the present case, both the patent proprietor and the opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form.

Claim 1 of the main request (identical to the set of claims as granted) read (in English translation):

A reel changer for a web-fed rotary printing press with a drive with at least one electric motor (03) by which a material reel (02), which is held on a receiving unit (06) in the reel changer (01) and onto which the material web is wound, is capable of being driven in a rotating manner, wherein the electric motor (03) is embodied as a synchronous motor (03), characterized in that the rotor of the synchronous motor (03) has poles comprising permanent magnets.

Auxiliary requests I, Ia and Ib each had two independent claims:

1. A reel changer for a web-fed rotary printing press with a drive with at least one electric motor (03) by which a material reel (02), which is held on a receiving unit (06) in the reel changer (01) and onto which the material web is wound, is capable of being driven in a rotating manner, wherein the electric motor (03) is embodied as a synchronous motor (03), wherein a receiving unit (05; 06; 16) engages with each end of the two ends of the material reel (02), wherein two pairs of receiving units (05; 06; 16) are arranged so that each receives one material reel (02) or a scrap reel, wherein each receiving unit (05; 06; 16) of the reel changer has its own actuator (21) for adjusting the receiving units (05; 06; 16) in the axial direction of the material reel (02), wherein the actuators (21) are movable together with the receiving units (05; 06; 16).

2. A reel changer for a web-fed rotary printing press with a drive with at least one electric motor (03) by which a material reel (02), which is held on a receiving unit (06) in the reel changer (01) and onto which the material web is wound, is capable of being driven in a rotating manner, wherein the electric motor (03) is embodied as a synchronous motor (03), wherein the rotor of the synchronous motor (03) has poles comprising permanent magnets, wherein a receiving units (05; 06; 16) engages with each end of the two ends of the material reel (02), wherein two receiving units (05; 06; 16) are arranged for bearing the material reel (02), wherein both receiving units (05; 06; 16) are rotatably supported and wherein only one of the two receiving units (05; 16) is driven by the electric motor (03), wherein the receiving units (06; 16) have structurally identical bearings.

The Board found the main request to lack inventive step and then dealt with auxiliary requests I, Ia and Ib. Here is what the Board had to say on their compliance with R 80:

*** Translation of the German original ***

[4.1] The OD did not admit auxiliary request I inter alia based on R 80 because the addition of the second independent claim 2 was not required to overcome an objection under A 100 (a). This was only admissible in exceptional cases. The OD also argued that its reasoning was supported by decisions T 610/95 and T 181/02.

[4.2] The Board cannot adopt this point of view, for the following reasons:

R 80 essentially provides that the description, claims and drawings of the European patent 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.

In the present case the single independent claim of the patent as granted was considered to lack novelty. During the opposition proceedings [the patent proprietor] has filed two independent claims limited to different subject-matter, wherein the independent claim as granted was limited by adding the features of dependent claims as granted (claims 36, 47, 53 and 54, and claims 36, 37 and 40, respectively). The Board is of the opinion that the [patent proprietor] was right in pointing out that under these circumstances such an amendment complies with the requirements of R 80.

[4.3] Decision T 181/02, which has been cited by the OD, discusses a situation that can be compared to the present case. There also the competent Board came to the conclusion that the replacement of a single independent claim by two or more dependent claims may be caused by a ground for opposition, e.g. when two dependent claims as granted were inked in parallel to a single independent claim. Then the filing of two independent claims might be possible.

Decision T 610/95, which has also been cited in the impugned decision, concerns the situation where the patent proprietor keeps the single independent claim which has been attacked in the opposition proceedings and adds a second independent claim, which was considered to be inadmissible in view of R 57a EPC 1973 (now R 80). However, as the present factual situation is different, decision T 610/95 is not suitable for justifying the dismissal of auxiliary request I based on R 80.

Even considering said decisions the Board is of the opinion that auxiliary request I complies with the requirements of R 80. For the same reason, auxiliary requests Ia and Ib also comply with the requirements of R 80.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.


NB: Another interesting decision in this context is T 642/06 [4.2], where Board 3.2.03 said (again, my translation of the French original):

“Moreover, the set of claims filed comprises not one single independent claim by three such claims, i.e. new claims 1, 10, and 15, which are based on the combinations of claims 1 and 6, claims 1 and 10 and claims 1 and 3 as granted. However, dependent claims 3, 6 and 10 as granted are neither parallel nor exclusively dependent on claim 1. Quite obviously, as their subject-matter is not directed at alternative or equivalent developments of a single concept or embodiment (see Case Law, 5th edition, 2006, VII.C.6.1.3 and T 181/02), they cannot correspond to the only exception where the case law allows the filing of supplementary independent claims during opposition or opposition appeal proceedings. The amendments included in the set of claims according to the first auxiliary request go beyond the amendments that are necessary for overcoming the grounds for opposition (in particular, A 56) and, therefore, violate R 80.” (my emphasis)