Key points
- The Board, in translation: " Rule 80 EPC - The opposition division found in its decision that the request met the requirements of Rule 80 EPC. The appellant-opponent contradicted this. It took the view that the inclusion of independent claim 16, which was additional to the granted version of the patent, and of claims 17 to 22 dependent thereon, violated the requirements of Rule 80 EPC.
- " The Board does not find the objection convincing. Claim 1 of auxiliary request 2 was amended compared to claim 1 of the version as granted in that instead of the initially claimed composition, the use of the same as a shape-memory material is now claimed. The dependent claims 2 to 9 have been modified analogously and thus also relate to said use.
- " Furthermore, an independent claim 16 has been added, which differs from claim 1 as granted in that it includes the additional feature that the curable structural adhesive is a polyurethane composition. Claims 17 to 22 dependent thereon, which are also appended, correspond to granted dependent claims 2, 3 and 5 to 9.
- " The division of claim 1 as granted into a use claim, which relates to the entire originally defined composition, and a product claim, which relates to a restricted definition of the originally defined composition, is, in the board's view, an expedient reaction of the appellant- patent proprietor in order to respond to the objection of lack of novelty raised and thus avoid the revocation of the patent. Since both the dependent claims 2 to 9 and the dependent claims 17 to 22 have an equivalent in the granted patent, namely in the dependent claims 2 to 9, no claims have been included that do not already have an equivalent in the granted version of the patent had patents.
- " The requirements of Rule 80 EPC are therefore met."
T 2487/17 - link after the jump.
source http://justpatentlaw.blogspot.com/2022/04/t-248717-adding-independent-claim-in.html
