Tuesday, 12 February 2013

T 1306/08 – Let Us Distinguish

[3.1] The respondent argued that A 100(c) had not been cited as a ground for opposition and, making reference to decision G 9/91, concluded that the board was not competent to examine whether or not the amendments are in accordance with the requirements of A 123(2).

The board wishes to emphasise that, in so far as subject-matter of the European patent extending beyond the content of the application as filed is concerned, a distinction has to be made between the ground for opposition according to A 100(c), which concerns amendments made in the pre-grant phase, and amendments made in the course of opposition or appeal proceedings.

Regarding the latter alternative, decision G 9/91 [19] notes:
“In order to avoid any misunderstanding, it should finally be confirmed that in case of amendments of the claims or other parts of a patent in the course of opposition or appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC (e.g. with regard to the provisions of A 123(2) and (3)).”
As the objections raised by the appellant concern subject-matter amended in the course of the opposition and appeal proceedings, the board concludes that it is competent to examine them.

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The file wrapper can be found here.