T 1857/19 - Cancelling claim category

 Key points

• “In comparison with this former first auxiliary request, all apparatus claims were deleted [in the current request]. The claims are thus limited to the method claims, i.e. to the claim category which was the principal subject of the discussion.” Therefore this amendment is automatically admitted, either because it is not case amendment because the deletion of the claims does not change the factual and legal framework, or because the fact that it significantly enhances procedural economy by clearly overcoming existing objections without giving rise to any new issues could be seen as exceptional circumstances in the sense of Article 13(2) RPBA 2020 (the Board leaves open the precise legal basis).
• The fact that the claims are limited by the amendment to claim category which was the principal subject of the discussion in the appeal proceedings prior to the amendment, distinguishes the case “from those underlying decisions T 2222/15 (Reasons 29 to 30) and T 1569/17 (Reasons 4.3.4), where the deletion of a claim category shifted the case substantially, thereby giving rise to new issues to be decided upon”.
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T 1857/19 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t191857eu1.html

Reasons for the Decision

1. Article 13(2) RPBA 2020

1.1 The claims under consideration are the method claims of the former first auxiliary request of 9 June 2021, which was filed to address the objections under Article 123(2) EPC newly raised in the board's communication pursuant to Article 15(1) RPBA 2020; to be faced with new objections constitutes extraordinary circumstances in the sense of Article 13(2) RPBA 2020.

In comparison with this former first auxiliary request, all apparatus claims were deleted. The claims are thus limited to the method claims, i.e. to the claim category which was the principal subject of the discussion. The circumstances of the case are therefore similar to those in T 1480/16, Reasons 2.3, and T 995/18, Reasons 2, in which the deletion of the claims did not change the factual and legal framework and was thus not considered an amendment to a party's appeal case.

This distinguishes the case from those underlying decisions T 2222/15 (Reasons 29 to 30) and T 1569/17 (Reasons 4.3.4), where the deletion of a claim category shifted the case substantially, thereby giving rise to new issues to be decided upon.

Even if the deletion of a claim category were always to be considered an amendment, the fact that it significantly enhances procedural economy by clearly overcoming existing objections without giving rise to any new issues could be seen as exceptional circumstances in the sense of Article 13(2) RPBA 2020.

The request is thus taken into account.