T 0243/14 - Multiple independent claims in opposition

Key points

• Rule 43(2) does not apply in opposition. If claim 1 as granted is not inventive, you can split it up in two independent claims, with two different and unrelated features that each provide inventive step. The patentee did precisely this in the present case in Aux Req 1 before the OD. However, the procedural status becomes not so straightforward. 
• The OD did not admit AR-1, the Board does admit it. The OD found AR-2 with only one of the two independent claims (of AR-1) to be allowable. The opponent did not appeal. Therefore, in AR-1 with two independent claims, only the second independent claim (claim 3) is open to examination in appeal. 

IV. The decision was based on the claims of the patent as granted as main request and two auxiliary requests.

The differences in auxiliary request 1 compared to the main request, insofar as relevant to the present decision were that:

- Claim 1 specified the chemical nature of the initiating functional groups;

- Claim 3 - newly introduced as a further independent claim - differed from granted claim 1 by specifying that:

"said photoreactive polymer has at least five initiating functional groups on the dendritic polymer core".

Auxiliary request 2 differed from auxiliary request 1 in deletion of claim 3 with consequential renumbering of the remaining claims.

V. According to the decision the main request did not meet the requirements of Article 56 EPC. [] Auxiliary request 1, which had been filed during the oral proceedings was not admitted on the grounds that the amendment represented by claim 3 thereof, relying on features of the description, could not have been expected by the opponent.

Auxiliary request 2 also filed in the oral proceedings, but lacking claim 3 of the first auxiliary request was held to meet the requirements of Article 56 EPC since there was no incentive in the prior art to provide a photoreactive polymer having the defined initiator groups and co-initiators bound to a hyperbranched polymer core.

VI. The patent proprietor filed an appeal against the decision.

Reasons for the Decision

1. Admissibility of the main request.

The set of claims forming the present main request was submitted during the oral proceedings before the opposition division as auxiliary request 1. According to the appellant this request had been submitted in reaction to a letter of the opponent including new documents, in which submission matters raised by the opposition division in its communication had been addressed.

The Board is satisfied that the amendments made in the newly filed request were prompted by and directed to addressing the new submissions of the opponent and consequently that it is appropriate to admit this request to the proceedings.

2. Scope of the appeal proceedings

The main request differs from the set of claims (auxiliary request 2 in opposition proceedings) on the basis of which the opposition division held that the patent could be maintained solely by the insertion of independent claim 3, with consequential renumbering of subsequent claims.

Since the opponent has not filed an appeal, the set of claims as maintained by the opposition division has not been challenged. Consequently scrutiny in the appeal proceedings is restricted to claim 3 of the main request. Since the respondent has only challenged the presence of an inventive step for claim 3 and the Board sees no reason to deal with any other issue, the analysis will be limited to the objection of lack of inventive step.

3. Inventive step

[]

The above considerations lead to the conclusion that the subject-matter of claim 3 is not obvious in the light of D4, taken singly or in combination with D10.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance with the order to maintain the patent in amended form on the basis of

- the main request filed with letter of 12 September 2017

- and after any necessary consequential amendment of the description.