T 0341/16 - Minor amendment, significant change

Key points

• In this opposition appeal, the patentee submits amended claims two days before the oral proceedings, reverting from "consisting of" back to the (original) term "including" so as to address an objection under Article 123(2) EPC. The Board does not admit the request.
• " Amended requests, in particular when used to overcome preliminary formal objections, can significantly change the structure of the proceedings even when they are based on apparently minor modifications. This appears to be the case in the present situation, because the appellants' late reaction to the formal objection under Article 123(2) EPC made in the Boards' preliminary opinion against the substitution of "including" by "consisting of", created a new situation for the respondent, as up until that moment the respondent could have expected that the main request as filed on 30 January 2019 would likely be rejected under Article 123(2) EPC. " 
• In particular, the opponent could have expected that the focus would have been on the patentability of the first auxiliary request wherein a feature was narrowed, not on the patentability of the (broader) main request. 

EPO T 0341/16 - link

Reasons for the Decision

1. Main Request - Admittance (Article 13(1) RPBA)

1.1 The Board has decided to exercise its discretion under Article 13(1) RPBA not to admit this request for the following reasons:

Amended requests, in particular when used to overcome preliminary formal objections, can significantly change the structure of the proceedings even when they are based on apparently minor modifications. This appears to be the case in the present situation, because the appellants' late reaction to the formal objection under Article 123(2) EPC made in the Boards' preliminary opinion against the substitution of "including" by "consisting of", created a new situation for the respondent, as up until that moment the respondent could have expected that the main request as filed on 30 January 2019 would likely be rejected under Article 123(2) EPC. 

Since in the main request the feature "metallic salt" was not restricted to CaCl2, and this feature was restricted to CaCl2 in the following requests, the respondent might have not expected to discuss patentability of claim 1 defining this broader version of the feature. Thus, the removal of the main cause of non-compliance with Article 123(2) EPC (i.e. the substitution of "consisting of" by the originally defined term "including" in claim 1) two days before the oral proceedings potentially confronted the respondent with a patentability discussion which he might have not expected in view of the preliminary opinion of the Board.

1.2 The appellant argued that the request was a reaction to the new objections raised in the preliminary opinion of the Board, and that this reaction had arrived at such late stage because only then had it become apparent that the prior art taught away from the subject-matter of claim 1, so that a more general definition of the composition (i.e. "including" instead of "consisting of") could be used. Furthermore, the new main request was the result of a minor amendment which could not be regarded as taking the other party by surprise.

1.3 The Board cannot follow this argumentation, because the appellant had ample opportunity to react to the preliminary opinion of the Board as evidenced by the fact that it filed a substantive reaction as well as a new main request and auxiliary requests 1-9 with letter dated 30 January 2019. The appellant thus created the impression that it consciously and deliberately only wanted to defend the main request with the "consisting of" wording. Furthermore, as explained above, even minor amendments can potentially lead to significant changes in the structure of the proceedings, in particular affecting the substance to be discussed in the assessment of patentability.