Key points
- This decision provides yet a further contribution to the debate between the Boards about the question of whether cancelling independent claims constitute a case amendment.
- Present Board 3.3.06: “A request in which some claims have been deleted compared to the requests that were filed previously with the grounds of appeal or the reply is, according to the systematic context of Article 12(3) RPBA 2020 and Article 13 RPBA 2020, a new request and thus usually amounts to an "amendment to the party's appeal case".”
- “Some boards have taken the position that the deletion of method claims, product claims, dependent claims or alternatives in a claim request was not to be regarded as an "amendment to the party's appeal case" if the deletion does not change the factual and legal framework of the case (see for example T 1480/16, reasons 2.3; T 2243/18, reasons 2; T 1792/19, reasons 2; T 1151/18, reasons 2.1). The boards therefore concluded that the provisions of Article 13 RPBA 2020 were not to be applied at all ("non-applicability approach") if the deletion did not change the factual and legal framework of the case.”
- “Other boards have taken the position that the deletion of such claims or alternatives was indeed to be regarded as an "amendment to the party's appeal case".” [ with references]
- See also T 2091/18 (it is a case amendment) and T 2713/17 (it is no case amendment).
- “[AR-8 is] directed now exclusively to method claims, was filed for the first time during the oral proceedings before the board and differs from auxiliary request 4 in that the product claims have been deleted”
- The question is whether Art.13(2) RPBA applies at all. “the question of what can be defined as an "amendment to a party's appeal case", and with that the question of whether Article 13 RPBA 2020 is applicable, can be answered in the systematic context of the provisions guiding appeal proceedings (see also J 14/19, reasons 1.4). In this context, Article 12(3) RPBA 2020 provides that the statement of grounds of appeal and the reply shall contain a party's complete appeal case. Accordingly, all requests shall be specified expressly at this stage. It follows from this that only those requests that have been filed with a party's statement of grounds of appeal or the reply form part of a party's appeal case”
- The request is admitted, inter alia because: “the respondent [patentee] had already indicated in its reply to the grounds of appeal that within its auxiliary requests 5 to 7 it was prepared to defend the method claims [comprised in said requests]. ” “ Moreover, the board considered that the deletion of the product claims of auxiliary request 4 prima facie overcame all the objections discussed during the oral proceedings. The board also considered that the method of this new request was prima facie clearly allowable under Articles 123(2) and 56 EPC for the reasons given infra.”
EPO T 0494/18 -
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/02/t-049418-cancelling-independent-claim.html
