T 493/09 – No Change Intended

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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T 1592/09 – Because It’s There

This is an appeal of the opponent after the patent had been maintained in amended form by the Opposition Division (OD).

In what follows, the Board discusses the question of whether the ground of insufficiency of disclosure was already in the proceedings.

*** Translation of the German original ***

[2.1] In the present case the objection of the opponent regarding insufficient diclosure was discussed by both parties several times during the proceedings before the OD (see the minutes of the oral proceedings […]).

[2.2] In its decision G 10/91 [16] the Enlarged Board of appeal has acknowledged that an OD may, in application of A 114(1), examine a belated ground for opposition that is not covered by the notice of opposition. However, this examination requires that, in a first step, the OD, of its own motion [or] upon request by the opponent or a third party, admits and thus introduces the ground for opposition into the opposition proceedings, in conformity with the criteria for relevance given in G 10/91 [16]. If this has happened, the OD will, in a second step, carry out the examination and thus “of course decide whether such ground of opposition prejudices the maintenance of the opposed patent”, see G 1/95 [5.2].

[2.3] The minutes of the [oral] proceedings and the impugned decision do not contain any explicit statement in respect of whether the late filed ground for opposition of insufficient disclosure was admitted and thus introduced into the proceedings or not. In such a situation the introduction of this ground for opposition can result from the fact that the reasons for the decision contain substantiated statements regarding that matter.

[2.4] In point 3.3 of its decision the OD refers, in an unambiguous and sufficient way, to the legal and factual framework of the ground for opposition according to which the skilled person can “can carry out” (thereby implicitly mentioning [the German version of] A 100(b)) a waterstop device according to claim 1 having the claimed features (claims 1 and 4 as granted) without exercising any inventive activity and that in this context “the proportions … can be adapted … by the skilled person … by trial and error” (i.e. the submission of facts and evidence for justifying the enablement).

It is irrelevant in this context whether, as argued by the [patent proprietor], the treatment of enablement was carried out under the heading “Inventive step”, because an appealable decision is defined by the substance of its content and not by its form.

[2.5] Thus the Board comes to the conclusion that the ground for opposition under A 100 (b) already was in the proceedings. Therefore, the examination of this ground for opposition by the Board does not constitute a “fresh” ground within the meaning of the opinion G 10/91 of the Enlarged Board of appeal, cf. G 1/95 [5.3]).

[2.6] Moreover, in the present case it implicitly follows from the examination of the belated ground for opposition in point 3.3 of the decision on the opposition that [the OD] apparently had been found to be prima facie sufficiently relevant and, therefore, had been – rightly –admitted and introduced into the proceedings beforehand, in compliance with the criteria for relevance [defined] in G 10/91 [16].

The fact that the margin of discretion of the OD for admitting and introducing belated grounds for opposition apparently was applied in a correct way in the present case was not discussed, let alone challenged, by the [patent proprietor] during the appeal proceedings. It only had discussed whether the ground for opposition of insufficient disclosure indeed was part of the decision of the OD and, therefore, of the proceedings.

Also, the statements of the parties on insufficiency of disclosure, as recorded in the minutes of the [oral] proceedings before the OD held on March 20, 2009, do not contain any hint that the introduction of this ground for opposition – in contrast to the introduction of new documents, see point 3.8 of the minutes – was disputed by the [patent proprietor] but had nevertheless – perhaps wrongly – taken place when the decision on the opposition was made. Point 5.7 of the minutes only contains a neutral statement of the [patent proprietor] according to which “insufficiency of disclosure was to be considered as a late filed ground for opposition”. During the [oral] proceedings before the Board the [patent proprietor] had another opportunity of commenting this issue.

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T 600/08 – Cured

Opponent 3 was the only party to file an appeal against the decision of the Opposition Division to maintain patent EP 1 022 787 in amended form.

This patent was based on a divisional application from application EP 0 400 146 filed by Siemens AG. The divisional application had been filed on December 10, 1999, in the name of Osram Opto Semiconductors GmbH & Co. OHG (hereinafter OOS).

On May 12, 2000, the applicant’s representative requested a correction (pursuant to R 88 EPC 1973) of the name of the applicant. He pointed out that at the time of the filing of the divisional application, the parent application (referred to as “root application” (Stammanmeldung) in the decision) had already been transferred from Siemens to OOS but the transfer had not yet become effective before the EPO. The fact that the divisional had been filed in the name of OOS was due to an error.

On June 2, 2000, the RS allowed the correction.

The opponent argued that the RS should not have granted the request to correct the designation of the applicant for the divisional application. Therefore, the application based on which which the patent under consideration had been granted never was a valid divisional application. As a consequence, its effective date was the date on which the divisional application was filed, and the publication of the parent application was novelty-destroying prior art for the “divisional” application.

The patent proprietor pointed out that the effective date of a patent based on a divisional application could only be the date of filing of the parent application. Consequently, the parent application could not destroy the novelty of the opposed patent.

According to the patent proprietor, the – incorrect – objection that the RS should not have allowed the correction could not be invoked in the appeal proceedings.

In what follows, the Board deals with the novelty objection:

*** Translation of the German original ***

[2.1] The impugned patent is based on divisional application n° 99 124 677. The divisional application was filed on December 10, 1999. The OOS company was named as applicant. Application n° 89 109 835, which had been filed on May 31, 1989, by Siemens AG was cited as previous application (root application).

When the divisional application was filed, Siemens AG was still named as applicant for the root application in the European Patent Register (EPR).

The transfer of the root application from Siemens AG to OOS was only entered into the EPR on January 31, 2000, after a corresponding request had been filed on the same day.

In a communication dated May 4, 2000, the RS of the EPO informed the applicant for the divisional application that at the time of filing of the divisional application the applicant for the divisional application was not the same as the applicant for the root application and that, unless the error was corrected within one month after the receipt of the communication, the applicant would be informed by means of a communication pursuant to R 69(1) EPC that the above mentioned application could not be treated as a divisional application.

Then Siemens AG, in a written submission dated May 12, 2000, requested that the applicant of the divisional application be corrected – under R 88 EPC 1973 – to Siemens AG.

[Siemens AG] justified this request by pointing out that, from a substantive point of view, at the time of filing of the divisional application the root application had already been transferred from Siemens AG to OOS but that this transfer had not yet become effective before the EPO. This had been overlooked when the divisional application was filed. Therefore, the OOS company had been erroneously named as applicant for the divisional application.

In a communication dated June 2, 2000, the RS informed [Siemens AG] that the correction of the applicant had been allowed.

[2.2] The appellant objected to this [course of action]. A correction pursuant to R 88 1973 should not have been made. As a consequence, there was no valid divisional application and the effective date of the impugned patent was the date of receipt of the underlying application. Consequently, the content of the root application was novelty-destroying for the application that had been filed as a divisional application. The whole matter should be treated in analogy to a case where a priority was not validly claimed.

[2.3] The Board cannot endorse this reasoning. After all, it can be left unanswered whether [the RS] was right at that time in allowing the correction - although there are good arguments for concluding that it was - or not. But even if the correction should not have been made at that time there is no support in the EPC for the consequences the appellant derives from it.

As the Enlarged Board of appeal has explained in decision G 1/05 [11.1],

“[u]nder the EPC the filing date of the root application is the only filing date which can be attributed to a divisional application, by way of the legal fiction contained in Article 76(1), second sentence, second half sentence, EPC […]. There is no room under the EPC for a divisional application to have as filing date the date of its actual filing with the EPO.”

As a consequence, as the [patent proprietor] has rightly pointed out, there are only two alternatives for a European patent application filed as a divisional application. Either it is not treated as a divisional application, in which case there are no grant proceedings at all, or it is treated as a divisional application, in which case it can only have the date of filing of the root application. Therefore, it necessarily follows from the fact that the application on which the impugend patent was based was filed as a divisional application that it is entitled to the date of filing of the root application. As a consequence, the root application cannot constitute a novelty-destroying prior art for the impugned patent.

In this respect the case under consideration differs fundamentally from the examination of the validity of a priority claim. The right of priority has the effect that the date of priority counts as the date of filing of the European patent application for the purposes of A 54, paragraphs 2 and 3, and A 60, paragraph 2. If the claimed priority proves invalid, this effect does not occur and the filing date is the actual date of filing.

Moreover, [the EPC] does not provide for an examination of the lawfulness of the correction of the designation of the applicant carried out by the RS in opposition proceedings. A 100 gives an exhaustive list of the grounds for opposition. Futher grounds cannot be invoked against the patent as granted during opposition proceedings.

In principle the grant of the patent cures possible formal errors and deficiencies that have occurred during the grant proceedings, such as a possibly unlawful allowance of a request for a correction pursuant to R 88 EPC 1973. Such deficiencies cannot lead to the revocation of the patent as granted in opposition proceedings, because they do not constitute a legal ground for opposition (cf. Schulte, “Patentgesetz mit EPÜ”, 8th edition, §39 PatG or A 76 EPC, respectively, marginal numbers 78, 79).

Incidentally, the fact that the impugned patent has been amended does not alter [the situation] because in this case also the cut-off effect (Zäsurwirkung) of the act of grant cures possible formal errors and deficiencies that have occurred during the grant proceedings.

This finding is not surprising. It is also to be accepted in other cases - such as the case of a patent which was granted after a request for re-establishment had been allowed pursuant to A 122, although it should not have been allowed - that possible formal errors and deficiencies that have occurred during the examining proceedings are cured by the act of grant and are not examined any more in opposition proceedings (cf. J 22/86).

[2.4] As a consequence, the content of the root application cannot be novelty-destroying for the impugned patent.

The Board then found the claims on file to involve an inventive step and finally dismissed the appeal.

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NB: The Board also provided a headnote:

A patent application filed as a divisional application can only have the filing date of the root application.

The EPC does not provide for the possibility of examining the lawfulness of a correction of the designation of the applicant carried out by the Receiving Section during opposition proceedings (see point [2.4] of the Reasons).

T 1523/08 – Not Fresh

In this case claim 1 of the patent as granted was attacked on the grounds of lack of novelty and of inventive step; dependent claim 4 only for lack of inventive step.

In response to the preliminary opinion expressed by the Opposition Division (OD) the patent proprietor filed a new main request, claim 1 of which was a combination of claims 1 and 4 as granted.

The opponent attacked this claim for lack of novelty.

The patent proprietor requested the novelty attack not to be admitted as, in the notice of opposition, claim 4 was only attacked for lack of inventive step. The ground of lack of novelty, therefore, was a new ground of opposition.

The OD dismissed this request because it could not “detect a new ground for opposition in the contesting of the novelty of claim 1 as the notice of opposition indicated the patent to be attacked in its entirety on lack of novelty as well as inventive step.

The OD finally maintained the opposed patent on the basis of the third auxiliary request.

The patent proprietor filed an appeal.

The main request before the Board was identical to the main request before the OD.

The patent proprietor reiterated his argument against the novelty attack.

Here is what the Board had to say:

[2.1] Novelty as a fresh ground for opposition It is a fact that claim 4 as granted, which has been combined with claim 1 as granted to form claim 1 of the main request, was only objected for lack of inventive step in the notice of opposition.

However, lack of novelty as a ground for opposition was raised in the notice of opposition and substantiated e.g. with respect to claim 1. Hence, lack of novelty as a ground for opposition cannot be regarded as a fresh ground for opposition.

This is in line with G 10/91 [15-16], in which it is stressed that the grounds for opposition are linked to the “statement pursuant to R 55(c) EPC 1973”, with R 55(c) EPC 1973 requiring the opponent to present an indication of the facts and evidence in support of the grounds for opposition.

This means that a ground for opposition raised must be substantiated with facts and evidence, but it cannot be inferred that a ground for opposition raised and substantiated in the notice of opposition with respect to an independent claim - in the present case, claim 1 - but not with respect to a dependent claim - in the present case, claim 4 - will amount to the introduction of a fresh ground for opposition when substantiated for the combination of the independent and the dependent claim - in the present case, the combination of claims 1 and 4 - only later in the proceedings.

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T 1900/07 – No More

The patent under consideration was opposed on the grounds of lack of novelty (in particular over A 54(2) document D1 and A 54(3) document D4). Lack of inventive step was mentioned but not substantiated.

In its decision, the Opposition Division (OD) discussed the legal framework of the opposition and made the following statement:

“Legal framework of the present opposition

The legal framework of an opposition case is defined solely by (i) the extent to which the patent is actually opposed and (ii) the grounds upon which it is opposed.

With respect to the first criteria, the opponent stated in his notice of opposition […] that patent in suit is opposed in its entirety. The claims as granted comprise two independent claims : claim 1 relating to a composition consisting of (a), (b) and (c).and claim 11 relating to a dietary supplement for the prevention of inflammatory processes and articular disorders consisting of an admixture of (a) and (b), wherein the wording of features (a) and (b) are identical for both claims. On the subsequent pages of the notice of opposition, the indication of facts, evidence and arguments concern exclusively the subject-matter of claim 1. The proprietor, relying on the principles set out in G 9/91, argued that the second independent claim was outside the remit of opposition proceedings.

The Division notes that there is an inconsistency between, on one hand, the general statement at the beginning of the notice of opposition, and the subsequent pages of the notice of opposition on the other hand, which relate solely to one of the two independent claims. The Division considers the patent in suit was actually opposed in part only, despite the general statement mentioning that the patent was opposed as whole. In the present case, the patent in suit relates to two different chemical entities (as defined in claims 1 and 11), which only partly overlap. and allowing to the opponent to amend serious inconsistencies in his notice of opposition with respect to the extent of the opposition after expiry of the nine-month period fixed by Art. 99(1) EPC is contrary to the basic concept of post-grant opposition under the EPC.

With respect to the second criteria, the opponent has indicated that the grounds for opposition were lack of novelty and inventive step […]. In the notice of opposition, no facts, arguments or evidence with respect of inventive step were brought forward. Instead, in the last paragraph of the notice of opposition, it was mentioned that

“Aus verfahrensokonomischen Gründen soll die Diskussion der erfinderischen Tatigkeit zurückgestellt werden bis Patentansprüche vorliegen, die zumindenstens das Kriterium der Neuheit erfüllen.”

Such a statement cannot be considered to fulfill the requirements of R. 55(c) EPC. As the alleged lack of inventive step is not sufficiently substantiated and as the Division fails to see any reason why it should be introduced under Art. 114(1) EPC on the basis of the documents cited in the procedure, this ground of opposition is not part of the present proceedings. […]

In summary, the legal framework of the present opposition procedure is limited to the substantive examination of the independent claim actually opposed by the grounds actually supported by fact, evidence and arguments, namely novelty of independent claim 1 as granted. …”

The OD then found claim 1 of the patent as granted not to be novel over both D1 and D4 and maintained the patent in amended form.

Both the patent proprietor and the opponent filed an appeal against the decision of the OD. The patent proprietor requested the patent to be maintained as granted.

In its statement of grounds of appeal, the opponent raised novelty objections (based on D1, D3 and D4) but also inventive step objections (based on D9 in combination with D10 and D11 as well as on D8 together with the common general knowledge of the skilled person). Documents D8 to D11 had only been filed together with the statement of grounds of opposition.

The Board found claim 1 as granted to be novel.

What will it do with the inventive step objections?

[1] The OD decided that, as a result of the content of the notice of opposition, the legal framework of the opposition was limited to the substantive examination of novelty of claim 1 as granted […].

[2] The legal framework of an opposition case is defined by the extent to which the patent is actually opposed and by the grounds on which it is opposed.

[3] Regarding the extent to which the European patent is opposed, the opponent on page 1 of the notice of opposition, dated 13 August 2004, requested to revoke the patent in its entirety.

The grounds for opposition were indicated on page 2, first paragraph, of the notice of opposition, as being A 100(a) in combination with lack of novelty (A 54) and lack of inventive step (A 56). However, on the following pages the opponent only substantiated the ground for opposition in accordance with A 100(a) in combination with A 54 with regard to claim 1 as granted.

The only statement referring to the requirements of A 56 […] read (my translation):

“For the sake of procedural economy the discussion of inventive step is postponed to the stage at which the claims on file fulfil at least the criterion of novelty.”

[4] As far as the extent of an opposition is concerned, if an opponent requested revocation of the patent in its entirety, it is sufficient to substantiate the ground for opposition in respect of at least one claim of the patent for the requirements of R 76(2)(c) (R 55(c) EPC 1973) to be met. R 76(2)(c) does not refer to claims but rather requires that the notice of opposition should contain a statement of the extent to which the patent was opposed (see Case Law of the Boards of Appeal of the EPO, 5th Ed., 2006, VII.C.5.2.1(b)).

[5] The ground for opposition under A 100(a) in combination with A 56 has not been substantiated within the time limit prescribed in A 99(1) as required in R 76(2)(c). This ground for opposition, which has also not been introduced into the proceedings by the OD under A 114(1) in accordance with the principles set out in the decision of the Enlarged Board of Appeal G 10/91 [16], was not part of the opposition procedure […].

[6] Although not arguing against this issue of the OD’s decision, [the opponent], in the appeal procedure […] submits evidence and arguments substantiating an objection of lack of inventive step of the claimed subject-matter. Thus, A 56 is a “fresh ground for opposition” (see G 10/91 [18]) which in appeal proceedings can be considered only with the approval of the Patentee. As can be seen from Patentee’s written submissions it does not approve the introduction of this fresh ground for opposition.

[7] Thus, in summary the Board decides with regard to the legal framework of the present opposition/appeal procedure that the patent in suit was opposed in its entirety under A 100(a) on the ground of lack of novelty (A 54) and no more.

Finally the patent was maintained as granted.

Note that the present reasoning is not contrary to T 131/01, because the inventive step objections were not based on D1 but on documents that were new in the proceedings. The Board might have discussed inventive step (or remitted the case) had the opponent based its inventive step attack on A 54(2) document D1 he had used for the novelty attack.

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T 1044/08 – Together We Fall

In this case the opponent filed an appeal against the decision of the Opposition Division (OD) to reject the opposition.

The opposition had been based on the grounds of lack of novelty, lack of inventive step as well as insufficiency of disclosure. The notice of opposition explained that independent claim 1 and all dependent claims 2 to 22 were lacking inventive step … and that dependent claim 15 (depending on claim 1 only) also lacked novelty.

Claim 15 read:

The coating composition of claim 1 further containing high-boiling organic liquid and said high-boiling organic liquid is an oxohydroxy liquid selected from the group consisting of tri- and tetraethylene glycol, di- and tripropylene glycol, the monomethyl, dimethyl, and ethyl ethers of these glycols, liquid polypropylene glycols, diacetone alcohol, the low molecular weight ethers of diethylene glycol and mixtures of the foregoing.

As claim 1 had not been attacked on the ground of novelty, the OD concluded that claim 1 was novel.

In its notice of appeal, the opponent contested this formal approach and pointed out that the novelty attack against claim 15 encompassed claim 1.

The patent proprietor argued that this was a new ground as far as claim 1 was concerned and that it refused its consent to treat this ground.

The Board does not share this view:

[2.1] The [opponent] argued that the ground for opposition under A 100(a) in combination with A 54 had been substantiated as required in R 55(c) EPC 1973, now R 76(2)(c), within the time limit prescribed in then applicable A 99(1) EPC 1973. In support of this position the [opponent] referred to page 16 of the notice of appeal filed on 29 September 2005. The [opponent] submitted further that the novelty objection to claim 1 raised in the statement setting out the grounds of appeal was based on facts and arguments which had been set out in the cited passage of the notice of opposition.

The [patent proprietor] maintained that the ground for opposition under A 100(a) in combination with A 54 should be disregarded since the opponent, in his notice of appeal, had merely objected to dependent claim 15 lacking novelty. Since novelty of an independent claim had not been in dispute during opposition proceedings, that ground for opposition had not formed part of the legal framework of those proceedings. The objection under A 100(a) in combination with A 54 against claim 1 had to be considered a fresh ground for opposition. As the patentee, he did not agree to its introduction at the appeal stage.

[2.2] Hence, it has to be examined whether or not the objection of lack of novelty against claim 1 was substantiated in the statement setting out the grounds of opposition which, therefore, did not require the consent of the patentee to examine it in the appeal proceedings.

As to the required substantiation of the ground(s) of opposition, the function of R 55(c) EPC 1973 (now R 76(2)(c)) is, inter alia, to establish the legal and factual framework within which the substantive examination of the opposition is in principle to be conducted, thereby giving the patentee a fair chance to consider his position at an early stage of the proceedings (see G 9/91).

Therefore, according to established case law, an objection raised in opposition must be substantiated in the notice of opposition in such a way that the facts and arguments are sufficient for the EPO and the patent proprietor to understand the case against the patent without further investigation (T 2/89 [3]). In decision T 222/85 [4], the board held that the requirement in R 55(c) was only satisfied if the contents of the notice of opposition were sufficient for the opponent’s case to be properly understood on an objective basis, from the point of view of a reasonably skilled man in the art to which the opposed patent related.

[2.3] Regarding the extent to which the European patent is opposed, the [opponent] on page 1 of the notice of opposition as well as on page 2 of Form 2300, both filed on 29 September 2005, requested revocation the patent in its entirety. The grounds for opposition were indicated on page 1 of the notice of opposition as well as on page 2 of Form 2300 as being A 100(a) in combination with A 54 (lack of novelty) and A 56 (lack of inventive step), as well as A 100(b).

[2.4] The issue of novelty was explicitly addressed on page 16 in the context of dependent claim 15. In this passage it is stated that example 1 of document D5 had disclosed all the features of claim 1 of the patent in suit with the exception of the presence of a low-boiling organic liquid. The [opponent] further argued that, since silanes undergo hydrolysis, low-boiling organic liquids like methanol and ethanol are formed that remain in the composition. Thus, due to hydrolysis of 3-glycidyloxypropyltrimethoxysilane (GLYMO) mentioned in example 1 of document D5, methanol and GLYMO were both present in the composition. As a consequence, the coating composition according to example 1 of document D5 contained more than 1 weight percent of a low-boiling organic liquid as required.

[2.5] As the [opponent] appropriately pointed out, the novelty objection to claim 1 raised in the statement setting out the grounds of appeal was based on the facts and arguments set out on page 16 of the notice of opposition summarised in the previous paragraph. Although the presentation of the objection under A 100(a) in combination with A 54 in the context of dependent claim 15 was not straightforward, the skilled reader, giving full consideration to the explicit reference to example 1 of document D5 and the arguments regarding hydrolysis of silanes, was able to recognise and understand the gist of the attack on the patent under said ground of opposition which included the subject-matter of claim 1. Inferring from page 16 of the notice of opposition that the opponent had acknowledged novelty of claim 1 and merely objected to dependent claim 15 is not an objective assessment of the [opponent’s] submissions. Therefore, the board is of the opinion that, in so far as the ground for opposition under A 100(a) in combination with A 54 is concerned, the opponent’s submissions were sufficient for the OD and the patent proprietor to understand the [opponent’s] case without further investigation.

[2.6] It follows that in the present case the ground for opposition under A 100(a) in combination with A 54 was substantiated as required by R 55(c) EPC 1973 (now R 76(2)(c)) and did not constitute a fresh ground for opposition. Therefore, its consideration by the board of appeal did not require the [patent proprietor’s] approval (see decision G 10/91).

The Board finally found claim 1 to be novel but to lack inventive step. The patent was revoked.

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T 2291/08 – Prima Facie

This highly interesting decision deals with a situation where the Opposition Division (OD) introduced a new ground of opposition (A 100 (c)) of its own motion. The Board finds that it should not have done so, in particular because this ground had already been examined - and found not to be relevant - in an appeal against the refusal of the underlying application by the Examining Division (ED). There are also some very interesting statements on a possible case of partiality of an OD member and on how ODs should (or should not) be composed.

[2] The contested patent has been revoked for containing subject-matter that extends beyond the content of the application as originally filed (A 100(c)). This ground had not been raised by the Opponent in the notice of opposition, but had been introduced into the proceedings by the OD exercising its discretion under A 114(1). The question facing the Board in the present case is whether the OD had exercised its discretion correctly.

[3] Whilst the OD is entitled, pursuant to R 81(1) to examine grounds for opposition not invoked by the opponent, the circumstances in which an OD should consider raising a ground of its own volition are set out in the decisions of the Enlarged Board (EBA) G 9/91 and G 10/91. The view held by the EBA is that the notice of opposition, which includes a statement of the grounds on which the opposition is based (R 76(2)), has the purpose of establishing the legal and factual framework within which the substantive examination of the opposition in principle is to be conducted. This was considered important in order to give the patentee a fair chance to consider its position at an early stage of the opposition proceedings (see G 9/91 [6]).

[4] The EBA emphasised that consideration of grounds not covered in the notice of opposition is an exception to the above principle, and should only take place where prima facie there are clear reasons to believe such grounds are relevant and would in whole or in part prejudice the maintenance of the patent (G 9/91 [16]).

[5] The [patent proprietors] in the present case argue that the ground under A 100(c) vis-à-vis A 123(2) was not prima facie relevant, and thus should not have been admitted.

[6] It is relevant here that the application for the contested patent had initially been refused, and the decision appealed and heard as T 1190/01 before a different board of appeal from the present one. The Board in T 1190/01 [2] concluded that the disputed claim met the requirements of A 123(2).

[7] It is well established case law of the boards of appeal that a decision taken in examination appeal proceedings is not binding in subsequent opposition proceedings (see Case Law of the Boards of Appeal of the EPO, VII.E.1, penultimate paragraph). This means that, contrary to the suggestion of the [patent proprietors], the board’s decision concerning A 123(2) is not res judicata and was open to challenge, for example by an opponent citing A 100(c) in the notice of opposition; this would be comparable to the situations arising in T 1099/06 and T 167/93. The question though is whether the OD was right to raise the ground later of its own volition.

[8] The message of the EBA in G 9/91 and G 10/91 is clear; as stated above, new ground can only be introduced by an OD in exceptional circumstances and only when prima facie relevant. The [patent proprietors] are correct in stating that the expression “prima facie” means “at first sight” or “on the face of it”. This indicates that it should not be necessary to conduct a detailed examination of the new ground before determining whether or not it is relevant.

[9] The Board in T 1190/01 concluded that the amendments met the requirements of both A 123(2) and A 84. This is expressly stated in paragraph [2] of the Reasons for the Decision, which gives page 7, lines 28 to 30 as the basis for the amended feature “cooling at >10°C/s down to 480 and 750°C”. The cited passage in the description of the original application is part of a discussion about the different types of microstructures that can be achieved, and states that a “cooling speed of >10°C/s in the temperature interval 750-480°C encourages the formation of non equiaxed ferrite grains”. Thus, a cooling rate of >10°C/s from the hot deforming temperature down to the defined temperature range (Tavv), where coiling takes place, is not expressly defined in the original application. Nevertheless, examples of cooling rates >10°C/s down to this temperature range are disclosed (see for example Figure 2), with the maximum being 80°C/s. Although the claim does not now define an upper limit for the cooling rate, it might be argued that an appropriate value in practice would be readily apparent to the skilled person.

[10] The OD was also of the view that there was no support for the amendment of the claim to include the feature of “maintaining the austenite grain dimensions larger than 150 µm” in the hot deforming step. As indicated by the Board in T 1190/01, this feature is disclosed in the original application on page 7 (lines 30 to 31), where it is said to encourage the formation of non equiaxed grains. It would seem that this feature is indeed presented as being of relevance to all the steels contemplated by the application.

[11] Regarding claims 2 and 3, the OD was of the view that the omission of the expressions “as cast” and “a continuous pattern of the stress-strain diagram of the material” amounts to an unallowable generalisation contrary to A 123(2). The [patent proprietors] argue that the invention only concerns as cast structures […], and hence the claimed subject-matter must also relate to such steel strip, whether or not it is explicitly defined. The feature of “a continuous pattern of …” describes a property inherent to the steel product, hence failure to mention of this property neither adds nor detracts from the claimed subject-matter. There are thus plausible reasons why these amendments may be allowable.

Summary

[12] It is of no concern here whether, after detailed consideration, a claim has been amended to contain added subject-matter, but rather whether, given the exceptional circumstances of the late stage of the proceedings, the alleged objection is prima facie highly relevant.

[13] Given that the previous Board had expressly stated, together with a reference to a passage in the original application, that the amendments find support, and in addition, when the application as a whole is considered it is also plausible that the amended features were disclosed, it cannot be said that the allegations under A 100(c) are prima facie highly relevant.

[14] Consequently, the Board is of the view that introduction of the ground for opposition under A 100(c) by the OD of its own volition is contrary to G 9/91 and G 10/91 and, given the circumstances of the present case, constitutes a procedural violation.

[15] Since this was the sole ground cited by the OD for revocation of the patent, it is serious and justifies reimbursement of the appeal fee (R 103(1)(a)).

Main and First Auxiliary Requests

[16] The [patent proprietors] request that the decision under appeal be set aside and the granted patent (main request) or the claims filed with the grounds of appeal (first auxiliary request) be examined with respect to the grounds cited by the Opponent, without remittal of the case to the OD.

[17] Grant of the patent was opposed for lack of novelty and inventive step (A 100(a)) and for insufficient disclosure (A 100(b)). None of these grounds has been dealt with by the OD, and it is not the function of an appeal board to decide upon issues arising for the first time during the appeal proceedings. The case can only receive procedurally correct treatment if it is remitted to the department of first instance.

[18] Consequently, the main and first auxiliary requests of the [patent proprietors] are not allowed.

Second Auxiliary Request

[19] The [patent proprietors] request that the decision be set aside and the patent as granted or amended according to the first auxiliary request be remitted to an OD having a different composition. The reason given by the [patent proprietors] for this request is that the first examiner of the OD had “manifested an incontestable negative attitude against the patentability of the invention”, and that this examiner was also the first examiner of the ED that had dealt with the contested patent.

[20] The mere fact that the view held by an examiner on any particular issue differs from that of a party is per se insufficient for requesting a change in composition. In addition, the appointment of examiners to an OD is primarily an administrative function for which the director of the relevant department of first instance is responsible; the boards of appeal are limited to merely reviewing a case to establish whether the requirement of impartiality has been fulfilled (see T 838/02 [8]).

[21] Nevertheless justice must not only be done, but it must be seen to be done, and it is well established case law of the boards of appeal that a suspicion of partiality or bias may be sufficient to invalidate a first instance decision (see Case Law of the Boards of Appeal of the EPO, 6th edition 2010, VI.J.3), even though in the vast majority of cases in which suspicion of partiality is raised, no actual bias is established (see T 900/02 [4]).

In the present case, the combination of the following facts cast serious doubt on the impartiality of the OD:

- the merits of the disputed amendment had already been decided by a board of appeal;

- the ground under A 100(c) which led to revocation of the patent had not been raised by the opponent, but was introduced ex officio by the OD;

- the same primary examiner had acted in both decisions under appeal.

Such doubts are sufficient to declare the impugned decision null and void ab initio.

In addition, there should be no ground for dissatisfaction with the conduct of the further proceedings in this case, such as might be if the same OD were to revoke again the patent, even after an impeccably conducted proceedings.

[22] For these reasons the Board considers it appropriate to recommend that the case be heard by an OD having a different composition.

[23] The present case gives grounds for questioning whether the current arrangement, in which the same examiner may be responsible for drawing up the search report, drafting the European search opinion, and then carries out the function of first examiner in both the examination and ODs, can be considered judicially fair.

In particular, opposition is an independent procedure and is not to be seen as a continuation or extension of the examination procedure (see G 1/84 [9] and G 9/91 and G 10/91). A 19(2) requires that at least two members of the ED are replaced, and that the first examiner of the ED cannot become the chairman of the OD. However, this does not prevent the same examiner from carrying out the primary task of examining in both examination and opposition, which may lead to a continuity of views that blurs the independence of the two procedures.

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T 1478/07 – No Need To Hear

I owe the knowledge of this decision, which has not been published on the DG3 site yet, to a kind colleague. Among other things, the decision deals with the question what an Opposition Division (OD) has (or rather does not have) to do when introducing a new ground of opposition.

[5.1] The patent in suit was opposed only on the basis of A 100(a) for lack of novelty and lack of inventive step. The opposition division introduced the ground of opposition based on A 100(c) during oral proceedings (OPs).

[5.2] [The patent proprietor] disputed that this new ground of opposition had been properly introduced into the opposition proceedings, given that it had not been given the opportunity to argue as to whether this new ground of opposition was prima facie relevant. Decisions G 9/91, G 10/91 and T 433/93 were cited in that respect. Failure to respect the right to be heard regarding that issue constituting a procedural violation (A 113(1)) which justified the refund of the appeal fee as well as the remittal of the case to the department of first instance.

[5.3] In view of the content of the minutes of the OPs before the OD and the submissions of [the patent proprietor], it appears that the legal framework of the admissibility of a new ground of opposition was discussed […]. After adjournment of the OPs, this new ground was admitted by the OD […].

[5.4] It cannot be inferred either from the content of decision G 9/91 (or G 10/91) or from decision T 433/93 […] that in order to meet the requirements of A 113(1), the OD must, before discussing the substantive reasons for the objection, give the parties the opportunity to express their views as to the prima facie relevance of the introduction of a new ground of opposition (A 114(1)). In that respect no procedural violation occurred.

[5.5] The board may, however, assess whether the OD exercised its discretion to admit this new ground of opposition in an unreasonable way.

In the board’s judgment, when an objection under A 100(c) is raised during OPs, one of the requirements justifying the introduction of this ground is that the contested amendment has no explicit basis in the application as originally filed.

That is actually the case here since on the one hand the feature that the MFR12 value of the first ethylene polymer is from 50g/l0min to 2000g/l0min is only explicitly disclosed in the application as filed in connection with the additional features that i) an amount of chain transfer agent was used and ii) step 1 was performed first and on the other hand the feature that the melt flow rate MFR22 lower than the first MFR21 not disclosed. This is sufficient to raise a prima facie relevant objection because there are clear reasons to believe that such ground is relevant. This prima facie relevant objection can be reversed based on the arguments presented by the proprietor on the substance of the case.

[5.6] It is concluded that the OD exercised its discretion in an appropriate manner when it decided to introduce the new ground of opposition based on A 100(c) and that no substantial procedural violation occurred. This ground of opposition is therefore de facto in the appeal proceedings.

[5.7] [The patent proprietor] argued that an objection based on A 83 had been introduced during OPs. This also amounted to a procedural violation in accordance with A 113(1), since it had not been aware of the argument in support of this new ground and thus was not prepared to provide an appropriate reply.

[5.8] The arguments of [the patent proprietor] are based on a misinterpretation of the decision at first instance. A 100(b) was not introduced by the OD. The fact that the OD checks whether an amended version of a set of claims as granted as far as the amendments are concerned meets the requirement of A 83 is in line with the requirement of A 101(3)(a). This does not mean that the objection under A 100(b) EPC has been introduced. Therefore, [the patent proprietor’s] request is no longer applicable.

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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.”

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