T 0895/18 - Full examination of Art.123(2)

 Key points

• The patentee appeals. The Notice of opposition was based on inventive step and insufficient disclosure. The OD revoked the patent because of insufficient disclosure. The OD added that “Objections of added subject-matter raised by the opponent at the oral proceedings in respect of the auxiliary requests were not to be followed, because the subject-matter was derivable from the structure of dependency of the claims and from the [examples]”.  
• The main request at issue in appeal is one of the auxiliary requests filed before the OD.
• The patentee argues that by analogy with G3/14 about clarity, the examination of Art.123(2) of this request should not concern the amendments made already in the grant proceedings.
• The Board finds that this argument “fails since it disregards the fact that in contrast to added subject-matter/extension beyond the content of the application as originally filed lack of clarity is not one of the grounds of opposition according to Article 100 EPC”.
• The Board notes that G 10/91, r.19 held that: "In order to avoid any misunderstanding, it should finally be confirmed that in case of amendments of the claims or other parts of a patent in the course of opposition or appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC (e.g. with regard to the provisions of Article 123(2) and (3) EPC)."
• Established case law is that said statement of the Enlarged Board “ clearly means that only the amendments made during opposition or appeal proceedings, not those made before grant, must be examined in accordance with Article 102(3) EPC for compliance with the requirements of the EPC, including Article 123(2) EPC.” ( T 693/98, r.2) (CLBA IV.C.3.4.3)
• The present Board: “This law [G10/91, r.19] thus requires that, in case of amendments in opposition or appeal proceedings, full examination of the amendments (and therefore in particular of the claims resulting from the amendments) is to be undertaken on appeal. There is no stipulation that the ground of Article 100(c) EPC has to have been invoked in the notice of opposition.
• As a comment, the Board's remark in brackets seems to be the whole point in dispute and seems controversial to me. The Enlarged Board said "such amendments are to be fully examined", not "the amended claims are to be fully examined" in G10/91, r.19.
• As held in T301/87, r.3.8: “it would seem to be somewhat absurd if the making of a minor amendment could enable objections outside Article 100 EPC to be raised which have no connection with the amendment itself.”

• In the present case, the OD did assess the request at issue for Art.123(2), but it's not clear to me from the decision of this entailed the pre-grant amendments (the OD introducing Art.100(c) as ground of own motion under R.81(1) (which would be surprising as the OD found Art. 100(c) to be complied with while R.81(1) requires “may be examined by the Opposition Division of its own motion if they would prejudice the maintenance of the European patent”) of if the OD carried out the limited examination of the amendments in line with T693/98 such that further Art.100(c) objections would (arguably) be a fresh ground of opposition in appeal. 
• 
  
  
• As to the substance, the patentee tried the argument that: “The application was "typical" of many [applications] which are drafted in the "USA style" and should therefore be read accordingly as disclosing also combination of features of [the] dependent claims even if [the dependent claims as filed] are not dependent on each other”. The argument did not fly. The Board indicates that it must apply Art.123(2) EPC and “no different criterion can be used in view of a deliberately selected drafting style”.
• 
  

T 0895/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t180895eu1.html

3. Main request filed with the statement of grounds of appeal

3.1 Article 123(2) EPC - Extent of scrutiny and general considerations

The appellant [patentee] raised three aspects in this respect which in the following are paraphrased in italics:

3.1.1 In the present case examination for compliance with Article 123(2) EPC should be restricted to those amendments made in the opposition procedure, analogously to the approach taken in respect of amendments introducing a lack of clarity. Therefore it was requested that the analysis of compliance with the requirements according to Article 123(2) be based on the patent as granted rather than on the application as originally filed.

The argument in support of a form of "parallelism" between treatment of unclear features and added subject-matter/unallowable amendments introduced pre-grant proposed by the appellant (see section XV.(b).(i), above) fails since it disregards the fact that in contrast to added subject-matter/extension beyond the content of the application as originally filed lack of clarity is not one of the grounds of opposition according to Article 100 EPC.

Furthermore according to the case law of the Enlarged Board G 9/91 (OJ EPO 1993, 408) section 19 of the reasons which also relates to the appeal procedure (see section 17 of the reasons) it is stated:

"In order to avoid any misunderstanding, it should finally be confirmed that in case of amendments of the claims or other parts of a patent in the course of opposition or appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC (e.g. with regard to the provisions of Article 123(2) and (3) EPC)."

This law thus requires that, in case of amendments in opposition or appeal proceedings, full examination of the amendments (and therefore in particular of the claims resulting from the amendments) is to be undertaken on appeal. There is no stipulation that the ground of Article 100(c) EPC has to have been invoked in the notice of opposition.

Once it is established that the fulfilment of the requirements of Article 123(2) EPC has to be examined, the wording of the Article itself ("The ... European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed.") does not give any room for taking anything different than the application as filed as the basis for analysing compliance. Any different analysis, in particular analysis of the fulfilment of the requirements based on the patent as granted, would have no legal basis and be contrary to the explicit wording of the European Patent Convention.

Consequently the first contention of the appellant cannot be followed and the request of the appellant that the analysis of the fulfilment of the requirements according to Article 123(2) be based on the patent as granted rather than on the application as originally filed is refused.

3.1.2 The approach of the Board was inconsistent with the approach foreseen in the Rules of Procedure in the version which entered into force in 2020 since it was incompatible with the "convergent approach" as had in fact been followed by the present Board in its decision not to admit the main request of September 2020.

The Rules of Procedure are secondary law and cannot serve to override higher ranked law, such as that of the Enlarged Board and indeed the highest law namely the European Patent Convention itself. Furthermore the stipulations of the Rules of Procedure embodying the "convergent approach" - which wording is not found in the Rules - apply to the parties and not to the boards.

Accordingly this contention also cannot be followed.

3.1.3 The application was "typical" of many relating to new and inventive compositions which are drafted in the "USA style" and should therefore be read accordingly as disclosing also combination of features of dependent claims even if they are not dependent on each other to the extent that they are technically sensible.

The first part of this contention cannot be disputed. It is true that applicants in different patent systems tend to formulate claim dependencies in different ways, namely mostly dependent only on the independent claims, with chains of dependencies or with multiple dependencies, and that this may be related to different requirements of the different patent systems. In the present case the appellant (then applicant) may have chosen to follow a combination of the first and the second approach in view of the requirements of the US patent system.

However, this was a deliberate choice of the appellant (then applicant) and there is no legal basis in the EPC for applying different requirements, or in particular for applying differently the requirements of Article 123(2) EPC, according to that choice.

Indeed, it cannot be disregarded that the choice of how to formulate the claim dependencies has consequences in respect of the disclosure which is provided to the skilled person by a patent application. While with a direct chain of dependencies a disclosure of a combination of features present in the different dependent claims so connected is generally provided, this is clearly not the case with a plurality of single dependencies from a single independent claim. The situation may be somewhat intermediate in the case of multiple dependencies, e.g. in the case where each succeeding claim is dependent on all preceding claims. In this scenario formally many different combinations are possible and the question of whether a specific combination of features resulting from multiple selections is directly and unambiguously derivable from the disclosure in the application as filed may have to be answered.

In any case in must be examined whether the combinations of features present in the amended claims are directly and unambiguously derivable from the whole of the application as originally filed, as required by Article 123(2) EPC and the established case law and no different criterion can be used in view of a deliberately selected drafting style.

For these reasons also the third contention of the appellant also cannot be followed.

3.1.4 In summary the three contentions of the appellant as set out above amount to inviting the Board to depart from the law of the EPC, either as set out in the convention itself or that developed further by the Enlarged Board.

The Board, as an organ of the European Patent Organisation is by definition bound by the EPC and it is the purpose, duty and function of the Board to apply said law and nothing different.

Accordingly the Board cannot accommodate the appellant in the manner proposed.

3.2 Added subject-matter - substantive considerations

[...]

The consequence is that whilst for each of the above-noted features of the claim in isolation a basis can be found in the claims as originally filed, there is no disclosure therein of the claimed combination.

In addition to the original claims, the appellant provided reference to individual passages of the description, where the features are disclosed in isolation, in an annex to its letter of 22 September 2020 and to the passage on page 9, lines 5-7 during the oral proceedings before the Board. In addition the examples were cited.

Reference to passages of the description where the individual features are cited can however not lead to any different conclusion by the Board in the absence of any arguments on the side of the appellant regarding the combination of features.

The conclusion is that the main request does not meet the requirements of Article 123(2) EPC.

4. First and second auxiliary requests as filed with the statement of grounds of appeal

As explicitly acknowledged by the appellant the further amendments made to these requests were not directed to addressing the matter of added subject-matter and resulted in no change to the assessment in respect of this provision of the EPC.

Accordingly these share the fate of the main request with the consequence that they also do not meet the requirements of Article 123(2) EPC.

Order

For these reasons it is decided that:

The appeal is dismissed.