In this case the Opposition Division (OD) maintained the opposed patent in amended form. The opponents filed an appeal.
One of the opponents submitted that the OD had violated its right to be heard by not allowing it to present arguments at oral proceedings (OPs) under A 84 with regard to a particular feature. A 101(3)(b) did not allow the unamended parts of a patent amended during opposition proceedings not to meet the requirements of the Convention. Decision T 1459/05 supported the view that features, present in the claims as granted might be subject to a revocation for formal reasons, i.e. in respect of A 84, if the claims have been amended.
It has often been tried to have the Boards examine the clarity of unamended claims, but in most cases this was unsuccessful. The present attempt is innovative because it invokes A 101(3)(b), which is a provision that has been introduced with the EPC 2000.
The Board was not persuaded:
[1] [Opponent 2] submitted that it followed from A 101(3)(b) that after amendment during opposition proceedings all parts of a patent - and thus also parts which had not been amended – had to meet the requirements of the Convention including A 84. Therefore the OD had violated its right to be heard by not allowing it to present arguments at OPs under A 84 with regard to the feature “steady state”.
[2] A 101(3)(b) stipulates that if the OD is of the opinion that, taking into consideration the amendments made by the proprietor of the European patent during the opposition proceedings, the patent and the invention to which it relates do not meet the requirements of this convention, it shall revoke the patent.
[3] A 101(3)(b) has no counterpart in the EPC 1973, but is a new Article introduced with the EPC 2000 to add a clarifying point, see Special Edition No. 4 OJ EPO 2007. It is stated with regard to A 101(3)(b) on page 110 that
“New A 101(3)(b) adds a clarifying point. If the proprietor of the patent requests amendments during the opposition proceedings, the OD examines whether, with reference to all the provision of the EPC, the substantive requirements for maintaining the patent are met. If the examination shows that they are, the patent is maintained as amended. If these requirements are not met, the patent is revoked. A 102(1) EPC 1973 provided for revocation of the patent only if the grounds for opposition prejudiced its maintenance. This meant that, strictly speaking, A 102(1) EPC 1973 did not provide the legal basis for revoking the patent if the patent as amended did not meet, for example, the requirements of A 84 or A 123(3) or R 27 or R 29 EPC 1973. In such cases it has been the practice of the EPO to revoke the patent under A 102(3) EPC 1973, even though this provision does not expressly so provide. For the purpose of clarification, new A 101(3)(b) expressly provides for the revocation of the patent as amended.” (Emphasis added).
[4] Thus, A 101(3)(b) was not formulated to provide for a complete examination of the claims of a patent in opposition proceedings once claims are amended, as alleged by [opponent 2]. Rather it was the intention of the legislator to provide with A 101(3)(b) a legal basis for revoking a patent if a specific amendment introduced into the patent during opposition proceedings did not meet the requirements of the EPC. This legal basis was missing in the EPC 1973. It was not the intention of the legislator to change the established principles laid down in the case law with regard to the examination of A 84 in opposition proceedings. These principles remain valid even after the entry into force of the revised EPC.
[5] In accordance with established case law, when amendments were made to a patent during opposition proceedings, A 102(3) EPC 1973 required them to be examined to ascertain if the EPC 1973, including A 84, was contravened as a result. However, A 102(3) EPC 1973 did not allow objections to be based upon A 84 1973 if they did not arise out of the amendment made. It was held that it would seem somewhat absurd if making a minor amendment were to enable objections outside A 100 EPC 1973 to be raised which had no connection with the amendment itself (Case Law, 6th edition 2010, VII.D.4.2; see in particular decision T 301/87 [headnote 1, 3.6-8]).
[6] In the present case, the feature “steady state” has not been added or amended during opposition proceedings but was already present in claim 1 as granted […]. Moreover, the amendments made to claim 1 during the opposition proceedings have not changed the context in which the feature “steady state” is used. Therefore objections as to lack of clarity against the feature “steady state” are inadmissible because they represent an attempt to raise an objection under A 84 – which is not a ground of opposition – against claim 1 as granted (cf. T 853/02 [3.1.1]).
[7] In the board’s judgement therefore the OD had no power to examine the clarity of the feature “steady state” in claim 1 and [opponent 2] had no right to raise an objection under A 84 against this feature. Accordingly, the OD did not violate [opponent 2’s] right to be heard when it decided not to hear it on the issue of clarity of the feature “steady state” and [opponent 2’s] request for reimbursement of the appeal fee is rejected.
[8] [Opponent 2] also submitted that in line with decision T 1459/05 features, which were already present in the claims as granted, might be subject to a revocation for formal reasons, i.e. in respect of A 84, if the claims had been amended.
[9] The board notes that also in decision T 1459/05 [4.3.1] it was held that A 101(3)(a) does not permit an objection under A 84 that does not relate directly to an amendment made in opposition proceedings. In the case underlying decision T 1459/05 claim 1 as granted had been combined with its dependent claim 4 and the amendment considered under A 84 was the feature added to claim 1. As set out above, in the present case the term “steady state” was present in claim 1 as granted and has not been added or amended during opposition proceedings. The board concludes therefore that decision T 1459/05 is not relevant to the present case.
NB: T 1459/05 has been criticised several times by the Boards themselves, see e.g. T 1855/07 or T 59/10, but I fear that unless the EBA clarifies the situation, this discussion will be recurrent.
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