T 0256/19 - Appellate review of Rule 80 decision

 Key points

• The Board: “Rule 80 EPC represents a non-discretionary provision of the EPC that relates to the allowability of a patent as amended rather than to admissibility.” The Guidelines specify inadmissibility as consequence. 
• This is probably relevant for the appellate review of the decision. Indeed, the Board finds that: “in conclusion, contrary to [the opponent's] request, auxiliary request 1 cannot be disregarded in these proceedings. However, given that the underlying amendment does not lend itself to counter any invoked opposition ground in the present case (cf. point 4.5 above), claim 1 of auxiliary request 1 is not occasioned by such a ground for opposition and is thus not allowable under Rule 80 EPC.”
• The Board bases its analysis on the similar wording of Rule 80 and Article 123(2) EPC. Further, “This conclusion is also corroborated by the preparatory work to Rule 80 EPC (cf. notes on the introduction of Rule 57a EPC 1973, i.e. the predecessor of Rule 80 EPC, in Notice dated 1 June 1995, OJ 1995, 409; see in particular pages 416 and 417, point 2) and thus in line with the legislator's intent (board's emphasis):  "New Rule 57a [Rule 80 EPC] ... addresses the purely substantive aspects of the proprietor's entitlement to amend his patent, and does not specify the point in time up to which amendment is allowed ... Its restriction of the right to amend is in line with the sense and purpose of opposition proceedings, and does away with the need for a discretionary provision like Rule 86(3) [Rule 137(3) EPC]".
• As a comment, I think this Notice requires careful interpretation. Clearly, the OD still has the discretion to hold late-filed amendments inadmissible even if they comply with Rule 80.
• In the board's view, discretion to disregard an amended version of a patent in inter partes proceedings can only emanate from Article 123(1) EPC in conjunction with Rule 79(1) and/or 81(3) EPC and, in case of arranged oral proceedings, with Rule 116(2) EPC (see also T 966/17, Catchword 1; R 6/19, Reasons 6 and 7).”
• I note that also Rule 80 needs a legal basis in some Article of the EPC.
• Quite possibly T 0406/86 is also relevant. Note that the phrase “the proprietor of the European patent shall, where necessary, be given the opportunity to amend, where appropriate, the description, claims and drawings” currently in Rule 81(3), interpreted in T 406/86, recently recalled in R6/19, originates from the original EPC 1973 rules. 
• Particularly relevant is T 295/87 hn.2: “Amendments to the text of a granted patent during opposition proceedings should only be considered as appropriate and necessary in the sense of Rules 57(1) and 58(2) EPC [1973] and therefore admissible if they can fairly be said to arise out of the grounds of opposition. An amendment proposing new claims having no counterpart in the granted patent, which is not in response to a ground of opposition, is not admissible”
• The subsequent introduction of (now) Rule 80 in 1995 codifies the above case law, with the important addition of "even if that ground has not been invoked by the opponent".
• The consequence of inadmissibility hence originates in old case law. 
• It may be asked whether the consequence under e.g. Rule 137(5) first and/or second sentence is inadmissibility or non-allowability.
• Note that where inadmissibility is solely based on substantive considerations, the  Board's review is not limited by G7/93. 

T 0256/19
https://www.epo.org/law-practice/case-law-appeals/recent/t190256eu1.html

4. Auxiliary request 1: claim 1 - Rule 80 EPC

4.1 Claim 1 of auxiliary request 1 differs from claim 1 of the main request in that here the word "sound" is inserted between the words "voice" and "portion" of feature (e).

4.2 The appealed decision states that the "first auxiliary request does not fulfill [sic] the requirements of Rule 80 EPC, and thus is not admissible" (see point 3.1 of the Reasons; board's emphasis; see also point 6, second paragraph of the Reasons) and refers in that context to the Guidelines for Examination in the EPO (see point 3.1.1, last sentence of the Reasons).

4.3 The board understands from the above statement that the opposition division did not admit the present auxiliary request into the opposition proceedings ("first auxiliary request [...] is thus not admissible"). In that regard, it is worth noting that the referred Guidelines for Examination (edition of November 2017, H-II, 3.2, second paragraph) have the following wording (board's emphasis):

"... where a 'clarification' can be considered as a limitation of the claim, it would be admissible under Rule 80 and could form the basis for maintaining the patent in amended form ...".

The board can only surmise that the opposition division assumed that, if an amendment made to a claim of a granted patent can be considered to be a limitation of that claim, the set of claims (such as the present first auxiliary request) containing that claim is to be admitted into the proceedings, otherwise it is not to be admitted. This suggests that Rule 80 EPC would relate to the matter of admittance (implying a discretionary decision) rather than the matter of allowability (as invoked for the other claim requests on file under Articles 54, 56 and 123(2) EPC).

4.4 As a consequence, appellant II explicitly requested that the first auxiliary request not be admitted into the appeal proceedings.

4.5 Appellant I argued that auxiliary request 1 was introduced in view of an objection regarding insufficiency of disclosure (Article 83 EPC).

While this may provide a reason why appellant I felt compelled to submit auxiliary request 1, it cannot be understood how the insertion of the mere word "sound" could be occasioned by such an objection. In view of the term "processed own voice sound portion signal" (emphasis added) of feature (d), the insertion of the word "sound" between the words "voice" and "portion" of the term "processed own voice portion signal" of feature (e) only ensures consistency of terminology within claim 1, which relates, at most, to clarity (Article 84 EPC), but not to sufficiency of disclosure.

4.6 Rule 80 EPC reads as follows (board's emphasis):

"Without prejudice to Rule 138, the description, claims and drawings may be amended, provided that the amendments are occasioned by a ground for opposition under Article 100, even if that ground has not been invoked by the opponent".

This means that claims may be amended if the amendments are occasioned by an opposition ground; they may not be amended otherwise. The requirement of Rule 80 EPC is therefore similar to that of Article 123(2) EPC, which states that the "European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed" (emphasis added by the board).

4.7 Accordingly, this board considers Rule 80 EPC to be a non-discretionary provision with a substantive requirement that relates to the allowability of a patent as amended rather than to admissibility, i.e. whether or not an amended version of the patent should be admitted into the opposition or appeal proceedings.

This conclusion is also corroborated by the preparatory work to Rule 80 EPC (cf. notes on the introduction of Rule 57a EPC 1973, i.e. the predecessor of Rule 80 EPC, in Notice dated 1 June 1995, OJ 1995, 409; see in particular pages 416 and 417, point 2) and thus in line with the legislator's intent (board's emphasis):

"New Rule 57a [Rule 80 EPC] ... addresses the purely substantive aspects of the proprietor's entitlement to amend his patent, and does not specify the point in time up to which amendment is allowed ... Its restriction of the right to amend is in line with the sense and purpose of opposition proceedings, and does away with the need for a discretionary provision like Rule 86(3) [Rule 137(3) EPC]".

In the board's view, discretion to disregard an amended version of a patent in inter partes proceedings can only emanate from Article 123(1) EPC in conjunction with Rule 79(1) and/or 81(3) EPC and, in case of arranged oral proceedings, with Rule 116(2) EPC (see also T 966/17, Catchword 1; R 6/19, Reasons 6 and 7).

4.8 In conclusion, contrary to appellant II's request, auxiliary request 1 cannot be disregarded in these proceedings. However, given that the underlying amendment does not lend itself to counter any invoked opposition ground in the present case (cf. point 4.5 above), claim 1 of auxiliary request 1 is not occasioned by such a ground for opposition and is thus not allowable under Rule 80 EPC.