Just Patent Law Blog: T 2108/22 - On Rule 80 and unity

08 August 2025

Key points

The Board, in the headnote in translation: "The extent to which the replacement of a claim with a claim containing multiple alternatives is permissible under Rule 80 EPC must be examined on a case-by-case basis. After weighing the conflicting interests of the parties, it must be examined whether the multiplication of alternatives in the claim itself constitutes a relevant and necessary amendment"

As a comment, the case-by-case analysis seems correct, although Rule 80 EPC is not the relevant provision for balancing interests because it is not a discretionary rule.
"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. " (T 0123/22, see also OJ 1995, p.416).
Hence, as explained in T 0256/19: “Rule 80 EPC represents a non-discretionary provision of the EPC that relates to the allowability of a patent as amended rather than to admissibility.”
As explained in that case: "discretion to disregard an amended version of a patent in inter partes proceedings can only emanate from Article 123(1) EPC in conjunction with Rule 79(1) and/or 81(3) EPC and, in case of arranged oral proceedings, with Rule 116(2) EPC (see also T 966/17, Catchword 1; R 6/19, Reasons 6 and 7).”

Rule 81(3) EPC: "the proprietor of the European patent shall, where necessary, be given the opportunity to amend, where appropriate, the description, claims and drawings". This requirement also applies to the admissibility of amended claims filed by the proprietor of their own motion (see my post on T 406/86)

As explained in T 0123/22: " 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. "

Let's have a look at the "case-by-case" analysis in the case at hand: "The addition of even a single one of the two OR alternatives limiting the claimed subject-matter, e.g., alternative A, to granted independent claim 1 is to be considered a sufficient and conclusive response to a novelty objection. ... The addition of the features of second alternative B, which is substantively completely different from first alternative A, cannot help to overcome the novelty objection that led to the addition of first alternative A; i.e., the addition of the features of second alternative B is neither relevant nor necessary. The addition of alternative B to amended claim 1 containing alternative A cannot therefore be motivated by a ground for opposition (as required by Rule 80 EPC), but only by the patent proprietor's desire for "appropriately broadest possible protection" (P1, page 7, third paragraph). However, an amendment aimed at achieving the widest possible scope of protection is not in accordance with the requirement of Rule 80 EPC."

This reasoning looks perfectly generic. I see no specific fact of the case in it.
It would have been helpful if the Board had engaged with G1/91 (or had referred a question to the EBA, if the Board considers that dealing with multiple inventions (lacking unity of invention) in opposition appeal is too much work in the current tight timelines for appeals).

EPO

The link to the decision can be found after the jump.

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