T 2845/19 - No derogation of Art. 123(3)

Key points

• The patentee amends the claims to bring them in conformity with the originally filed application in Japanese.
• "According to Article 14(2) EPC, a translation into one of the official languages of the EPO may, throughout proceedings before the EPO, be brought into conformity with the application as filed. During the opposition procedure, the proprietor filed amendments to the patent as granted in order to correct errors in the translation into English from the originally filed application in Japanese. These corrections were supported by [the Certified translation into English of the originally filed application in Japanese]."
• "According to Article 123(3) EPC, a European patent may not be amended in such a way as to extend the protection it confers. This requirement must therefore be met by claim 1 of the main request with respect to claim 1 as granted."
• After an review of the technical facts of the case, the Board concludes that: "it thus follows that claim 1 of the main request has been amended relative to claim 1 as granted in such a way as to extend the protection conferred by the European patent, contrary to the requirement of Article 123(3) EPC. The main request is therefore not allowable."
• Implicitly, Art. 14(2) provides no exception from Art. 123(2). In fact, in terms of the assessment under Art. 123(2), it is duplicative with Art. 70(2). The meaning appears to be procedural and an exception of R. 137(3). Whether Art. 14(2) provides an exception of Art. 13(1) and (2) RPBA remains to be seen.
• The patentee had submitted an auxiliary request before the OD. The OD did not examine that request as it found the patent as granted to be allowable.
• " The respondent requested that the case be remitted to the department of first instance for further prosecution since the opposition division had failed to consider the auxiliary request on file before it, which allegedly amounted to a substantial procedural violation."
• The Board does not remit the case as a matter of their discretion. Hence, the auxiliary request is not examined in substance, neither for allowability nor admissibility. 
• I note that the auxiliary request was not discussed in the patentee's reply to the appeal. 

EPO  T 2845/19

https://new.epo.org/en/boards-of-appeal/decisions/t192845eu1.html

1. Main request

Article 123(3) EPC

1.1 According to Article 14(2) EPC, a translation into one of the official languages of the EPO may, throughout proceedings before the EPO, be brought into conformity with the application as filed. During the opposition procedure, the proprietor filed amendments to the patent as granted in order to correct errors in the translation into English from the originally filed application in Japanese. These corrections were supported by D9.

1.2 According to Article 123(3) EPC, a European patent may not be amended in such a way as to extend the protection it confers. This requirement must therefore be met by claim 1 of the main request with respect to claim 1 as granted.

[...]

1.11 It thus follows that claim 1 of the main request has been amended relative to claim 1 as granted in such a way as to extend the protection conferred by the European patent, contrary to the requirement of Article 123(3) EPC. The main request is therefore not allowable.

2. Auxiliary request

2.1 The respondent requested that the case be remitted to the department of first instance for further prosecution since the opposition division had failed to consider the auxiliary request on file before it, which allegedly amounted to a substantial procedural violation.

2.2 According to Article 11 RPBA 2020, a Board should not remit a case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so. Fundamental deficiencies apparent in the proceedings before that department constituted such special reasons.

2.3 The opposition division found the main request before it to meet the requirements of the EPC. It was thus under no obligation to consider the auxiliary request on file as it had found a higher-ranking request to be allowable. That the opposition division did not consider the auxiliary request, did not deny the respondent of its right to be heard and did therefore not constitute a fundamental deficiency in those proceedings. Also, no other fundamental deficiency in those proceedings was alleged by the respondent. The respondent was also not prevented from falling back on that request when filing its response to the grounds of appeal, albeit it chose not to do so.

2.4 Absent a fundamental deficiency in the proceedings before the opposition division or any other special reason for doing so, the Board sees no reason to remit the case to the opposition division.

2.5 The Board thus decided not to remit the case to the opposition division.