T 0482/19 - Merely cancelling claims: not admitted

Key points

• Patentee files auxiliary requests 12 and 13 one month before the oral proceedings before the Board. AR-12 is based on the claims as granted with the product claims deleted and keeping the claims for the manufacturing method.
•  “[Patentee] argued that the amendments in auxiliary requests 12 and 13 would not be an amendment to the case as they contained no new subject-matter. Therefore Article 13 RPBA would not be applicable. The method claims were part of the granted patent. The opponents did not raise particular objections to the method claim, but only referred to the objections raised in view of the product claim. The fact that the opponents failed to attack all independent claims properly at an earlier stage of the procedure could not be used to the detriment of the patent proprietor.” 
• The Board does not admit the requests.
• “The method claim indeed is more limited than the product claim because of [the method features specifying a step wherein a] mold is loaded with two different materials before the step of feeding steam. These features did not play any role in the appeal procedure, as the submissions of the parties were mainly related to the product claims that were present in all requests on file. However, these features would require to be considered in particular in relation to the issue of inventive step and this would result in a substantial and unexpected change in the discussion at the oral proceedings. Therefore the filing of auxiliary requests 12 and 13 constitute an amendment of the patentee's case according to Article 13 RPBA 2020 rendering them inadmissible [sic!] into the appeal proceedings. The patentee did not provide any exceptional circumstances, which have been justified with cogent reasons, why auxiliary request 12 and 13 were only filed at such a late stage of the procedure. Hence both auxiliary requests are not taken into account according to Article 13(2) RPBA 2020.”

EPO T 0482/19 - link
https://www.epo.org/law-practice/case-law-appeals/recent/t190482eu1.html

5. Auxiliary requests 12, 13 - Admissibility

5.1 The Board did not admit auxiliary requests 12 and 13 into the appeal procedure.

5.2 Auxiliary request 12 is based on the claims as granted, wherein the product claims have been deleted. Auxiliary request 13 is based on the claims of auxiliary request 2, wherein the product claims have been deleted. Both requests were filed after the parties had been summoned to oral proceedings.

5.3 AP1 [patentee] argued that the amendments in auxiliary requests 12 and 13 would not be an amendment to the case as they contained no new subject-matter. Therefore Article 13 RPBA would not be applicable. The method claims were part of the granted patent. The opponents did not raise particular objections to the method claim, but only referred to the objections raised in view of the product claim. The fact that the opponents failed to attack all independent claims properly at an earlier stage of the procedure could not be used to the detriment of the patent proprietor.

5.5 In the present case, the summons to oral proceedings was notified after 1 January 2020, the date on which the RPBA 2020 entered into force. Thus Article 13 RPBA 2020 is applicable regarding the question whether to admit the appellant's requests into the appeal proceedings.

Under Article 13(1) RPBA 2020, the boards have discretion to admit and consider any amendment to a party's case after it has filed its grounds of appeal or reply. Under Article 13(2) RPBA 2020, any amendment to the party's appeal case shall, in principle, not taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.

5.6 The Board is aware of T 1480/16 wherein an auxiliary request, filed during oral proceedings and based on an auxiliary request on file from which only the method claims were deleted, were admitted into the appeal procedure. In T 1480/16, the Board found that the amended auxiliary request does not constitute an amendment of the case in particular as the discussion in view of novelty and inventive step would be the same.

5.7 The present case lies differently. The method claim indeed is more limited than the product claim because of features 12.1 and 12.2 wherein a mold is loaded with two different materials before the step of feeding steam. These features did not play any role in the appeal procedure, as the submissions of the parties were mainly related to the product claims that were present in all requests on file. However, these features would require to be considered in particular in relation to the issue of inventive step and this would result in a substantial and unexpected change in the discussion at the oral proceedings. Therefore the filing of auxiliary requests 12 and 13 constitute an amendment of the patentee's case according to Article 13 RPBA 2020 rendering them inadmissible into the appeal proceedings.

The patentee did not provide any exceptional circumstances, which have been justified with cogent reasons, why auxiliary request 12 and 13 were only filed at such a late stage of the procedure. Hence both auxiliary requests are not taken into account according to Article 13(2) RPBA 2020.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.