T 1719/13 - Adding dependent claim in appeal

Key points

• In this opposition appeal, the Board does not admit an AR wherein a dependent claim was added. The Board argues that the request could have been filed before the OD. The Board also notes that " this request amounts to an attempt to tidy up the claim set found allowable by the opposition division" and that " the opposition proceedings may not be used to tidy up the patent by adding one or more dependent claims" (under Rule 80). 
• This applies also in appeal: "By the same token, the board considers the addition of one or more dependent claims in appeal proceedings to a claim request held allowable by the opposition division to be an attempt to tidy up the allowable claim request and thus not admissible under Article 12(4) RPBA." The Board add that this rule is "independent of the admissibility of the amendments in question under Rule 80 EPC". The amendments at issue were in fact allowable under Rule 80. However, according to the Board, "for admissibility under Article 12(4) RPBA, compliance with Rule 80 EPC is not decisive".
• Hence, the Board looks first to the case law about how the OD must apply Rule 80, and then transfer this to Article 12(4) RPBA. As a comment, the Board does this while at the same time holding that "under Article 12(4) RPBA, compliance with Rule 80 EPC is not decisive". As a further comment, the Board in this case furthermore does not at all identify any moment during the first instance procedure at which the patentee should have filed the new requests, whereas that is the basic criterium of Article 12(4) RPBA. (edited to improve clarity of this bullet).

EPO T 1719/13 -  link

3. Auxiliary request I - admissibility

3.1 This request corresponds to auxiliary request I found allowable by the opposition division, except for the addition of dependent claim 5 (corresponding to claim 6 as originally filed).

3.2 It is undisputed that a request including present dependent claim 5 could have been filed in the proceedings before the opposition division. The admittance of this request into the proceedings was thus at the board's discretion (Article 12(4) RPBA).

3.3 In its grounds of appeal, appellant 1 argued only that this amendment had been carried out in order to "establish the identical dependency of the claims as existing in the PCT application". And at the oral proceedings it refrained from commenting on the admissibility of this request under Article 12(4) RPBA.

3.4 The board finds that there is no convincing reason to admit this request into the proceedings. The independent claims of this request are identical to those of the request held allowable by the opposition division, and therefore the inclusion of an additional dependent claim cannot be considered either a legitimate reaction to the impugned decision or a legitimate attempt to defend the patent in view of objections newly raised by the opponent (appellant 2) in its grounds of appeal. Rather, this request amounts to an attempt to tidy up the claim set found allowable by the opposition division.

3.5 It is consistent case law that the opposition proceedings may not be used to tidy up the patent by adding one or more dependent claims; such an addition is normally inadmissible under Rule 80 EPC (see for instance T 993/07, reasons 1.4 et seq.).

By the same token, the board considers the addition of one or more dependent claims in appeal proceedings to a claim request held allowable by the opposition division to be an attempt to tidy up the allowable claim request and thus not admissible under Article 12(4) RPBA.

3.6 For the sake of completeness, the board observes that this finding is independent of the admissibility of the amendments in question under Rule 80 EPC. In fact, as in the present case, it could be argued that the addition of dependent claim 5 along with making claim 3 dependent on claim 1 only and making claim 4 dependent on claim 3 only (instead of being dependent on "any preceding claim" as in their granted version) was occasioned by the ground for opposition set out in Article 100(c) EPC, because the dependency of claim 3 on claim 2 as granted and of claim 4 on claim 3 as granted was objected to by the opponent in its opposition brief (see item IX.1 thereof), and the features of the now added dependent claim 5 are those of granted claim 2. Put differently, with respect to the granted set of claims the inclusion of claim 5 could be considered not merely an addition of a dependent claim but the result of the redrafting of claims 3 and 4 occasioned by the ground for opposition set forth in Article 100(c) EPC. But, as stated above, for admissibility under Article 12(4) RPBA, compliance with Rule 80 EPC is not decisive.

3.7 For the above reasons, the board did not admit auxiliary request I into the proceedings.

4. Auxiliary request II - admissibility

4.1 It is uncontested that this request corresponds to the request held allowable by the opposition division. It therefore amounts to requesting the dismissal of appellant 2's appeal.

4.2 Appellant 2 objects to its admission because appellant 1 had not stated in its written submissions that this request corresponded to the one held allowable by the opposition division, nor was this readily apparent from appellant 1's written submissions. Therefore, Article 12(2) RPBA was not complied with. Moreover, this request did not overcome the objections raised by appellant 2.

4.3 The board notes that this request was filed with the notice of appeal. Therefore, the only legal basis for rejecting it as inadmissible would be Article 12(4) RPBA; but it was held by the opposition division to comply with the requirements of the EPC. It was the subject of the impugned interlocutory decision and evidently was not rejected as inadmissible by the opposition division. The proprietor did not fail to present it in the first-instance proceedings, having in fact filed it in the proceedings before the opposition division (cf. Article 12(4), first half-sentence, RPBA). The request also relates to the case under appeal and meets the requirements of Article 12(2) RPBA (cf. Article 12(4), second half-sentence, RPBA).

4.4 The requirements of Article 12(2) RPBA do not include the necessity to indicate in the grounds of appeal or in the reply thereto whether claim requests submitted in appeal proceedings have already been submitted in the first-instance proceedings. The board therefore fails to see why auxiliary request II could be held inadmissible solely on the basis of this provision.

Moreover, the board also holds that Article 12(2) RPBA is complied with because, by re-filing the request held allowable by the opposition division, appellant clearly and concisely requests (as an auxiliary request) in its notice of appeal that the impugned decision be upheld, i.e. that the appeal of appellant 2 be dismissed. That the opposing party, i.e. appellant 2, is allegedly unable to determine whether present auxiliary request II corresponds to the request held allowable by the opposition division is of no relevance because, on an objective basis, a comparison of the two claim requests reveals that they are identical. This is also confirmed by the fact that the board had no difficulty in identifying auxiliary request II as corresponding to the request held allowable by the opposition division (cf. the board's communication pursuant to Article 15(1) RPBA, point 6.1).

4.5 The question of whether this request fails to comply with the substantive requirements of the EPC, as submitted by appellant 2, is immaterial for the issue of its admittance.

4.6 For the above reasons, the board saw no reason not to admit auxiliary request II.