Key points
- The Board: “The new requests [under Art. 13(1) RPBA 2020, in effect] are distinguished from the previous ones by the deletion of the features of granted [dependent] claims 4, 5 and 12. ” The deleted dependent claims involved added subject-matter, according to the preliminary opinion of the Board.
- The Board: “This amounts to an "amendment of the party's appeal case" within the meaning of Article 13(1) RPBA 2020. Some boards have taken the position that the deletion of claims in a new 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).”
- “Other boards have taken the position that the deletion of claims was indeed to be regarded as an "amendment to the party's appeal case" and have applied Article 13 RPBA 2020 and assessed whether to admit the request in exercising their discretion in view of the criteria set out in Article 13 RPBA 2020, (T 2091/18, reasons 4; T 494/18 reasons 1.3-1.4; T 1597/16, reasons 4; T 1439/16, reasons 2; T 1224/15, reasons 5; T 908/18, reasons 1; see also T 682/16, reasons 5 to 8; and concerning Article 13(1) RPBA 2007 see T 168/16, reasons 2.1 and 2.2). ”
- “The board follows this [latter] approach as it is in line with the systematic context of Articles 12(3) and 13 RPBA (T 494/18, reasons 1.3-1.4). 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 thereto form part of a party's appeal case.”
- I wonder if we will see a referral to the Enlarged Board.
- Hence, the Board needs to decide on admissibility. The Board turns to the question of whether the amendments are suitable to address the Art.123(2) objections. After a very extensive review in r.2.7 - 2.7.10, the Board finds that the amended claims still lack basis in the application as filed.
- “Thus none of MR, AR1 to 5 and 7 to 10 is allowable under Article 123(2) EPC. Therefore, the board exercised its discretion not to admit these requests into the proceedings under Article 13(1) RPBA 2020.”
- The Board's assessment of Art. 123(2) under admissibility was extensive and in my view amounts to implicitly admitting the requests. For instance, see the remark in T 0847/20 r.4.1, addressed to an opposition division: “The opposition division has therefore not carried out a prima facie assessment but has fully considered the requests. By doing so, the opposition division has implicitly admitted the requests. Consequently, the Board takes the view that the opposition division wrongly exercised its discretion because, having implicitly admitted the requests, there was no discretion left not to admit them”."
- The decision also contains interesting points regarding the burden of proof for a technical effect.
- " In such a situation, in which the scope of the claimed composition, apart from the presence of the SRP, is much broader than that of the specific examples in the patent, the burden of proof that all the claimed compositions lead to the alleged advantageous effects mentioned in the patent rests upon the patent proprietor (T 97/00, reasons 3.1.6). In this respect, PP has also to give evidence that an improvement over the closest prior art is achieved over the whole breadth of the claim (T 653/07, reasons 5.1.7; T 1188/00, reasons 4.9)."
EPO T 1259/17 -
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-125917-deleting-dependent-claim-is.html
