T 0123/22 - Rule 80

Key points

• The proprietor appeals against the revocation of the patent. Claim 1 as granted was held to be not novel. The proprietor in the main request splitted up claim 1 into three independent claims.
• The opponent objects under Rule 80 EPC.
• The Board turns to T295/87. "In this regard, it should first be noted that Rule 57a EPC 1973 - the predecessor provision to Rule 80 EPC - was only introduced by the Administrative Council's decision of 13 December 1994 (see (OJ EPO 1995, [page] 9 ff.). Accordingly, T 295/87 does not directly concern this provision, but rather the question of whether the amendment made to the patent claims was necessary and appropriate within the meaning of Rules 57 and 58 EPC 1973. For this reason alone, it seems questionable whether the statements made in T 295/87 [point 3]- and adopted in some later decisions - can be applied to the application of Rule 80 EPC."
• T 295/87 seems to have concerned the addition of dependent claims.
• " the board called upon to decide the present case is of the opinion that no general guidelines can be derived from Rule 80 EPC as to the form in which a patent proprietor may amend claims in order for this amendment to be regarded as being prompted by a ground for opposition (see also T 2982/18, point 2.4 of the Reasons and T 359/13, point 1.1 of the Reasons, last paragraph). In particular, Rule 80 EPC makes no distinction as to whether the additional features included in an opposed claim originate from dependent claims or from the description. The only relevant factor for assessing the requirement of Rule 80 EPC is whether the amendment made is prompted by a ground for opposition. In this case, it must be examined whether the amendment is to be regarded as a serious attempt to counter a ground for opposition (see T 750/11, point 2.3.2 of the Reasons on the latter)."
• "Whether the additional features included in an independent claim under attack originate from dependent claims or from the description can affect the complexity of the amendment and play a role in discretionary decisions to admit late submissions. However, such admission decisions must be distinguished from the application of Rule 80 EPC. Rule 80 EPC is not designed as a discretionary rule - as is clear in the German version from the use of the imperative present tense - but concerns a substantive requirement for the allowability of an amendment made in opposition proceedings. The preparatory work also confirms this (see CA/12/94 Rev 1, No. 6.2 of the Reasons: "The new Rule 57a proposes a lex specialis for amendments in opposition proceedings. It is a purely substantive regulation of the right to amend. No regulation is made here about the point in time up to which amendments are permissible [...]"). Whether the requirement of Rule 80 EPC is met can therefore - like other substantive rules - only be taken into account in decisions on the admission of claims in the context of the prima facie allowability of a claim set. Prima facie allowability, like the complexity of the amendment, can be a criterion for the exercise of discretion in the admission of late submissions."
• As far as I know, Administrative Council document CA/12/94 is not public. I leave the issue of citing non-public preparatory documents as a basis for a legal interpretation aside here because largely the same statement was published in the Notice in OJ 1995, p.416: ""  [New Rule 57a] addresses the purely substantive aspects of the proprietor´s entitlement to amend his patent, and does not specify the point in time up to which amendment is allowed: here existing practice would remain unchanged"." (link to weblog post)
• The key part of Rule 80 is "even if that ground has not been invoked by the opponent", which puts a gloss on "necessary"  in Rule 81(3) EPC (not the "appropriate" requirement in Rule 81(3)). See my post on T256/19.
• "As regards the replacement of an independent claim affected by a ground of opposition by several independent claims, the board agrees with decision T 431/22, point 1 of the Reasons, according to which Rule 80 EPC does not preclude such an amendment provided that the subject-matter of the new independent claims is restricted or modified compared to the subject-matter of the contested claim. As explained in T 431/22, it is in principle legitimate for a patent proprietor to try to cover parts of the contested independent claim in order to overcome a ground of opposition, possibly by means of two or more independent claims (see in this regard also T 2290/12, point 4.1 of the Reasons, third paragraph). As explained in T 99/04, point 13 of the Reasons, the purpose of Rule 80 EPC is not to prevent a patent proprietor from maintaining the patent as broadly as possible, taking into account the grounds of opposition. "
• "As with the inclusion of features from the description, the replacement of an independent claim by several other independent claims may affect the complexity of the amendment and play a role in discretionary decisions to admit late-filed submissions. However, as explained in point 3.7 above, such admission decisions must be distinguished from the application of Rule 80 EPC. Also to be distinguished from Rule 80 EPC is the examination of whether the requirements of Article 84 EPC are met (on the latter, see T 2290/12, point 4.1 of the Reasons, last paragraph). 
• "In summary, the question of whether the replacement of an independent claim by several other independent claims within the meaning of Rule 80 EPC was caused by a ground for opposition cannot be answered in the negative in principle [...]"
• As a comment, G1/91 can be mentioned: lack of unity is no restriction in opposition. Rule 80 EPC can not be used to undermine G1/91 by the backdoor.
• See also T 0431/22: "a limit should be drawn if such an approach of replacing an independent claim [with multiple independent claims] appears to be [...] an abuse of procedure."
• 
  

EPO 

The link to the decision and an extract of it can be found after the jump.

https://www.epo.org/de/boards-of-appeal/decisions/t220123du1

Machine translation

3. Main request - Rule 80 EPC

3.1 Under Rule 80 EPC, the description, claims and drawings may be amended provided that the amendments are prompted by a ground for opposition under Article 100 EPC, even if that ground has not been invoked by the opponent.

3.2 In the present case, an objection was raised against claim 1 of the granted patent on the basis of the ground for opposition under Article 100(a) EPC in conjunction with Article 54 EPC. In response to this objection, the appellant replaced this independent claim by three other independent claims. The respondent considers that this approach is not covered by Rule 80 EPC.

3.3 In the Respondent's view, Rule 80 EPC requires that the patent proprietor should in principle respond to an objection against an independent claim only by amending that one independent claim. Also, according to decision T 181/02, point 3.2 of the Reasons, cited by the Respondent (which refers to T 223/97, points 2 - 2.2 of the Reasons, which in turn refers to T 295/87), the replacement of a single granted independent claim by two or more independent claims should only constitute an amendment prompted by a ground for opposition in exceptional cases. In the Respondent's view, this may be the case where a granted independent claim covers two specific embodiments (see T 181/02, point 3.2 of the Reasons) or where the additional independent claims are based on a combination with previously dependent claims (see T 453/19, point 2 of the Reasons). Neither of these two scenarios corresponds to the scenario in the present case, where independent claim 1 as granted was replaced by three new independent claims, each of which added a feature from the description and, in some cases, additional features of dependent claims. The respondent also referred to T 2063/15, point 4.1.2 of the reasons, last sentence, according to which such amendments based on the description generally violate Rule 80 EPC.

3.4 The board does not share the respondent's view. A relevant starting point for many of the decisions cited by the respondent appears to be T 295/87. The second headnote of that decision stated that an amendment not motivated by the grounds of opposition, which proposes new claims which have no equivalent in the granted patent, is not permissible. Furthermore, that decision stated in point 3 of the reasons that the opposition procedure should not provide an opportunity to introduce new subject-matter into the claims which may be sufficiently supported by the original description but which was not originally claimed as such. In this regard, it should first be noted that Rule 57a EPC 1973 - the predecessor provision to Rule 80 EPC - was only introduced by the Administrative Council's decision of 13 December 1994 (see (OJ EPO 1995, 9 ff.). Accordingly, T 295/87 does not directly concern this provision, but rather the question of whether the amendment made to the patent claims was necessary and appropriate within the meaning of Rules 57 and 58 EPC 1973. For this reason alone, it seems questionable whether the statements made in T 295/87 - and adopted in some later decisions - can be applied to the application of Rule 80 EPC.

3.5 Irrespective of this, the board called upon to decide the present case is of the opinion that no general guidelines can be derived from Rule 80 EPC as to the form in which a patent proprietor may amend claims in order for this amendment to be regarded as being prompted by a ground for opposition (see also T 2982/18, point 2.4 of the Reasons and T 359/13, point 1.1 of the Reasons, last paragraph). In particular, Rule 80 EPC makes no distinction as to whether the additional features included in an opposed claim originate from dependent claims or from the description. The only relevant factor for assessing the requirement of Rule 80 EPC is whether the amendment made is prompted by a ground for opposition. In this case, it must be examined whether the amendment is to be regarded as a serious attempt to counter a ground for opposition (see T 750/11, point 2.3.2 of the Reasons on the latter).

3.6 For the purposes of assessing whether an amendment of claims within the meaning of Rule 80 EPC was prompted by a ground for opposition, it is therefore irrelevant whether the additional features included in an opposed claim originate from dependent claims or from the description.

3.7 Whether the additional features included in an independent claim under attack originate from dependent claims or from the description can affect the complexity of the amendment and play a role in discretionary decisions to admit late submissions. However, such admission decisions must be distinguished from the application of Rule 80 EPC. Rule 80 EPC is not designed as a discretionary rule - as is clear in the German version from the use of the imperative present tense - but concerns a substantive requirement for the allowability of an amendment made in opposition proceedings. The preparatory work also confirms this (see CA/12/94 Rev 1, No. 6.2 of the Reasons: "The new Rule 57a proposes a lex specialis for amendments in opposition proceedings. It is a purely substantive regulation of the right to amend. No regulation is made here about the point in time up to which amendments are permissible [...]"). Whether the requirement of Rule 80 EPC is met can therefore - like other substantive rules - only be taken into account in decisions on the admission of claims in the context of the prima facie allowability of a claim set. Prima facie allowability, like the complexity of the amendment, can be a criterion for the exercise of discretion in the admission of late submissions.

3.8 As regards the replacement of an independent claim affected by a ground of opposition by several independent claims, the board agrees with decision T 431/22, point 1 of the Reasons, according to which Rule 80 EPC does not preclude such an amendment provided that the subject-matter of the new independent claims is restricted or modified compared to the subject-matter of the contested claim. As explained in T 431/22, it is in principle legitimate for a patent proprietor to try to cover parts of the contested independent claim in order to overcome a ground of opposition, possibly by means of two or more independent claims (see in this regard also T 2290/12, point 4.1 of the Reasons, third paragraph). As explained in T 99/04, point 13 of the Reasons, the purpose of Rule 80 EPC is not to prevent a patent proprietor from maintaining the patent as broadly as possible, taking into account the grounds of opposition.

3.9 The appellant's reference to G 1/84 is also irrelevant. This decision concerns a completely different issue ("opposition by the patent proprietor") than Rule 80 EPC and contains in point 9 of the reasons only the general statement that the opposition procedure is not intended as an extension of the examination procedure. Contrary to T 610/95, point 2.2 of the reasons, it cannot be deduced from this that the replacement of an independent claim by several other independent claims should in principle be equated with a continuation of the examination procedure, which violates Rule 80 EPC.

3.10 If an attacked independent claim is retained unchanged and supplemented by further (dependent or independent) claims, e.g. in order to create easier-to-defend fallback positions for possible later proceedings before national courts or the Unified Patent Court, this does not serve to remove the ground for opposition raised against the (unchanged) retained claim, since the amendment does not result in any other assessment in this regard. In such a case, Rule 80 EPC would not be satisfied.

3.11 As with the inclusion of features from the description, the replacement of an independent claim by several other independent claims may affect the complexity of the amendment and play a role in discretionary decisions to admit late-filed submissions. However, as explained in point 3.7 above, such admission decisions must be distinguished from the application of Rule 80 EPC. Also to be distinguished from Rule 80 EPC is the examination of whether the requirements of Article 84 EPC are met (on the latter, see T 2290/12, point 4.1 of the Reasons, last paragraph).

3.12 In summary, the question of whether the replacement of an independent claim by several other independent claims within the meaning of Rule 80 EPC was caused by a ground for opposition cannot be answered in the negative in principle or restricted to the categories of exceptional situations mentioned by the appellant and in T 181/02. Rather, this usually requires an assessment on a case-by-case basis (see T 263/05, point 4.8 of the Reasons, second and third sentences on the latter).

3.13 In the present proceedings, by replacing the contested independent claim with three other independent claims, the patent proprietor pursues the legitimate aim of maintaining parts of the contested claim which, in its opinion, are not affected by the ground of opposition raised. All three newly added claims were restricted in relation to the contested and discontinued claim. These restrictions evidently serve to overcome the ground of opposition raised in each claim - and thus also overall. In the present case, the main request therefore meets the requirement of Rule 80 EPC.