T 0781/13 - Broadening in appeal

Key points

• In this opposition case, the patent proprietor had deleted an alternative feature from claim 1 with its main request already with its reply in the first instance proceedings. In appeal, the patent proprietor maintains the patent as granted as main request. The Board does not admit this request.
• This is not particularly surprising. What is interesting, is that the Board considers it relevant that the patent proprietor had given up the alternative embodiments already with its reply to the opposition. 

Reasons for the Decision

Main Request (patent as granted)

1. Non-admissibility of the Main Request

1.1 During the opposition proceedings the Appellant had not defended the patent as granted. Already with its reply to the notices of opposition, it had requested as Main Request that the patent be maintained in amended form on the basis of an amended set of claims. In claim 1 of this Main Request as well as in any of the Auxiliary Requests filed during the opposition, the second alternative for ingredient "vi)" originally present in claim 1 of the patent as granted had been deleted.

1.2 With the statement of grounds of appeal the Appellant nevertheless requested as Main Request in these appeal proceedings that the patent be maintained as granted. This Appellant submitted reasons (XII, supra) why this request should be admitted and stressed that it did not intend to request remittal to the Department of first instance in such case.

1.3 Hence, the admissibility of the Appellant's Main Request into the appeal proceedings is within the discretionary power of the Board as foreseen by Article 12(4) RPBA.

1.4 The Board decided not to admit the Main Request for the following reasons:

1) The Main Request considered by the Opposition Division had already been filed by the Appellant with its reply to the objections under Articles 100(a), (b) and (c) EPC raised by the Respondents in their notices of opposition, i.e. already as a very first reaction to the notices of opposition.

2) The facts presented by the Appellant - i.e. that only at the hearing before the Opposition Division a further objection of novelty had been presented in view of a new and broader construction of the feature expressed by the initial wording of claim 1 - do not appear to logically justify any re-introduction in the main claim of already removed subject-matter, let alone of subject-matter that had been removed by the Appellant already in reply to the objections raised by the Respondents in their notices of opposition. Moreover, the re-introduction of the previously removed subject-matter does not appear to be an adequate response when attempting to overcome the objections raised against the embodiments concerning the first alternative for ingredient "vi)" on which the decision under appeal is based.

3) The Board also remarks that the new novelty objection raised during oral proceedings was based on document D3, which had already been discussed in writing with respect to inventive step of the claimed subject-matter. Moreover, it is apparent from the minutes of oral proceedings before the Opposition Division that, after the decision of the Division to consider document D3 as novelty destroying, the Patent Proprietor had sufficient time for submitting new auxiliary requests (three in number).

4) The Appellant's decision to defend its case throughout the opposition proceedings limited to the first alternative of ingredient "vi)" has thus resulted in the Department of first instance not considering any of the raised grounds of opposition in respect of the no longer claimed embodiments of the subject-matter of granted claim 1 according to the second alternative for ingredient "vi)".

Reintroducing the latter at the appeal stage would thus mean that the Board has to face a fresh case not dealt with before, even though, in the Board's view, the Patent Proprietor could have already tried to file auxiliary requests containing again such an alternative embodiment at the latest during the oral proceedings before the Opposition Division. Hence, to allow the Appellant in the present case to revert to the original version of claim 1 as granted is against the principle of procedural economy.

Hence, the Board exercising its discretionary power under Article 12(4) RPBA decides not to admit the Appellant's Main Request into the proceedings.