T 2713/17 - Cancelling independent claims no case amendment

Key points

• This decision provides yet a further contribution to the debate between the Boards about the question of whether cancelling independent claims constitute a case amendment.
• In recent decision T 2091/18 issued in writing 15.12.2021, Board 3.2.05 found that: “Für den Rückschluss, dass die Streichung von Ansprüchen das Beschwerdevorbringen nicht ändere, insofern sich dadurch keine geänderte Sachlage (T 995/18, T 981/17, T 1792/19, T 1857/19) bzw. keine (völlige) Neugewichtung (T 995/18, T 981/17) ergebe, findet sich nach Ansicht der Kammer in der Verfahrensordnung keine Stütze.”
• So Board 3.2.05 found it to be a case amendment.
• The present Board 3.2.06, in a decision taken 30.11.2021: “By submitting the new main request, the respondent's [patentee's] action did not give rise to any new issues requiring discussion but, on the contrary, merely restricted its requests then on file to subject-matter which had already been discussed and on which the Board had already given its conclusions [ that this claim fulfilled the requirements of the EPC]. ... The Board concludes that under these special circumstances, the submission of the new main request does not constitute an amendment to the party's appeal case in the sense of Article 13 RPBA 2020. The requirement for exceptional circumstances of Article 13(2) RPBA 2020 to exist is therefore not applicable. This is also in line with a body of case law developed by the Boards, see e.g. T1480/16 (Reasons 2) and T981/17 (Reasons 3).”
• The request is admitted.
• The new clarity objection is not admitted.
• The Board finds the claim to be allowable. “The Board thus avails itself of its power under Article 111(1) EPC to remit the case to the opposition division for the description to be adapted to the amended claim.”

EPO -  T 2713/17 - 

Link to the decision after the jump, as well as an extract of the decision text.

https://www.epo.org/law-practice/case-law-appeals/recent/t172713eu1.html

Reasons for the Decision

1. Admittance

The single claim of the new main request is identical to claim 6 of auxiliary request 1 as submitted with the reply to the grounds of appeal. The new main request thus corresponds to auxiliary request 1 with all claims but claim 6 deleted.

In this regard, it has first to be noted that the subject-matter of independent claim 6 of auxiliary request 1 was timely submitted as part of a request filed with the reply to the grounds of appeal. The appellant commented on it by letter of 7 September 2021 and it had already been discussed (with regard to all objections made against it) during the oral proceedings and the Board had already given its conclusion that this claim fulfilled the requirements of the EPC (see reasons below). By submitting the new main request, the respondent's action did not give rise to any new issues requiring discussion but, on the contrary, merely restricted its requests then on file to subject-matter which had already been discussed and on which the Board had already given its conclusions. Thus, although the appellant formally objected that the amendment was late-filed (without any argument), in the particular circumstances of this case as explained above, the respondent had merely cancelled out all other issues remaining on appeal.

The Board concludes that under these special circumstances, the submission of the new main request does not constitute an amendment to the party's appeal case in the sense of Article 13 RPBA 2020. The requirement for exceptional circumstances of Article 13(2) RPBA 2020 to exist is therefore not applicable. This is also in line with a body of case law developed by the Boards, see e.g. T1480/16 (Reasons 2) and T981/17 (Reasons 3).

As a consequence, claim 1 of the new main request is in the appeal proceedings (Article 12(2) and (4) RPBA 2007).