T 0494/18 - Cancelling independent claim is 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.
• Present Board 3.3.06: “A request in which some claims have been deleted compared to the requests that were filed previously with the grounds of appeal or the reply is, according to the systematic context of Article 12(3) RPBA 2020 and Article 13 RPBA 2020, a new request and thus usually amounts to an "amendment to the party's appeal case".”
  
• “Some boards have taken the position that the deletion of method claims, product claims, dependent claims or alternatives in a claim request was not to be regarded as an "amendment to the party's appeal case" if the deletion does not change the factual and legal framework of the case (see for example T 1480/16, reasons 2.3; T 2243/18, reasons 2; T 1792/19, reasons 2; T 1151/18, reasons 2.1). The boards therefore concluded that the provisions of Article 13 RPBA 2020 were not to be applied at all ("non-applicability approach") if the deletion did not change the factual and legal framework of the case.”
• “Other boards have taken the position that the deletion of such claims or alternatives was indeed to be regarded as an "amendment to the party's appeal case".” [ with references]
• See also T 2091/18 (it is a case amendment) and  T 2713/17 (it is no case amendment).
• “[AR-8 is] directed now exclusively to method claims, was filed for the first time during the oral proceedings before the board and differs from auxiliary request 4 in that the product claims have been deleted”
• The question is whether Art.13(2) RPBA applies at all. “the question of what can be defined as an "amendment to a party's appeal case", and with that the question of whether Article 13 RPBA 2020 is applicable, can be answered in the systematic context of the provisions guiding appeal proceedings (see also J 14/19, reasons 1.4). In this context, Article 12(3) RPBA 2020 provides that the statement of grounds of appeal and the reply shall contain a party's complete appeal case. Accordingly, all requests shall be specified expressly at this stage. It follows from this that only those requests that have been filed with a party's statement of grounds of appeal or the reply form part of a party's appeal case”
• The request is admitted, inter alia because: “the respondent [patentee] had already indicated in its reply to the grounds of appeal that within its auxiliary requests 5 to 7 it was prepared to defend the method claims [comprised in said requests]. ” “ Moreover, the board considered that the deletion of the product claims of auxiliary request 4 prima facie overcame all the objections discussed during the oral proceedings. The board also considered that the method of this new request was prima facie clearly allowable under Articles 123(2) and 56 EPC for the reasons given infra.”
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EPO T 0494/18 -

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t180494eu1.html

Reasons for the Decision

1. Admittance of auxiliary request 8

1.1 This request, directed now exclusively to method claims, was filed for the first time during the oral proceedings before the board and differs from auxiliary request 4 in that the product claims have been deleted.

1.2 In the case at stake, the first summons to oral proceedings was notified before 1 January 2020 and the second after this date, following the cancellation of the originally scheduled oral proceedings. Thus, instead of Article 13(2) RPBA 2020, Article 13(1) RPBA 2020 and Article 13 RPBA 2007 are applicable (Article 25 RPBA 2020; T 950/16, reasons 3.2; T 715/16, reasons 2.2; T 1511/15, reasons 3). As the detailed wording in Article 13(1) RPBA 2020 reflects much of the case law developed under Article 13(1) RPBA 2007 (T 32/16, reasons 1.1.2 and 1.1.3), the assessment can be based on Article 13(1) RPBA 2020.

1.3 Article 13(1) RPBA 2020 is applicable in case of "any amendment to a party's appeal case filed after the grounds of appeal or the reply".

The method claims 1 and 2 of auxiliary request 8 correspond to claims 8 and 9 of auxiliary request 4. The new request is thus only distinguished from auxiliary request 4 (which had been filed already with the reply to the grounds of appeal) by the deletion of the product and use claims. In a first step it needs thus to be assessed whether this amounts to an "amendment of the party's appeal case" within the meaning of Article 13(1) RPBA 2020.

1.3.1 Some boards have taken the position that the deletion of method claims, product claims, dependent claims or alternatives in a claim request was not to be regarded as an "amendment to the party's appeal case" if the deletion does not change the factual and legal framework of the case (see for example T 1480/16, reasons 2.3; T 2243/18, reasons 2; T 1792/19, reasons 2; T 1151/18, reasons 2.1). The boards therefore concluded that the provisions of Article 13 RPBA 2020 were not to be applied at all ("non-applicability approach") if the deletion did not change the factual and legal framework of the case.

1.3.2 Other boards have taken the position that the deletion of such claims or alternatives was indeed to be regarded as an "amendment to the party's appeal case". Accordingly, they have applied Article 13 RPBA 2020 and assessed whether to admit the request in exercising their discretion in view of the criteria set out in Article 13 RPBA 2020, in particular in view of its impact on the factual and legal framework of the case (T 2091/18, reasons 4; T 1597/16, reasons 4; T 1439/16, reasons 2; T 1224/15, reasons 5; T 908/18, reasons 1; see also T 682/16, reasons 5 to 8; and concerning Article 13(1) RPBA 2007 see T 168/16, reasons 2.1 and 2.2). If the factual and legal framework was not changed, the boards admitted the new request.

With the latter approach, the factual situation (describing the actual conditions that must be met in order for the legal consequence to occur) and the criteria for applying the board's discretion as set out in Article 13(1) RPBA 2020 are clearly distinguished from each other and treated separately. It is assessed, in a first step, whether the new request is to be defined as an "amendment to the party's appeal case" (subsumption on the factual side of the provision). If so, in a second step of exercising the board's discretion for determining the legal consequences (admittance or non-admittance), the impact of the amendment on the appeal case, in particular the impact on procedural economy, is taken into account.

Thus, the criteria for applying the board's discretion as set out in Article 13(1) RPBA 2020, including procedural economy, are only to be applied within the second step of determining the legal consequences.

1.3.3 In contrast to this two-step examination, the "non-applicability approach" anticipates a criterion of procedural economy ("change of the factual or legal framework"), and applies it to the first step of assessing the applicability of Article 13 RPBA 2020.

In this respect it needs to be noted that the applicability of a provision - or the definition of an undefined legal term - does not fall under the discretion of a board. Rather, from a dogmatic point of view, discretion always relates to the legal consequences of a provision and not to the definitions of the terms used therein on the factual side of the provision. Thus, within the "non-applicability" approach, the board would not have any discretion when applying the criterion of "change of the factual or legal framework", although Article 13(1) RPBA provides that the criteria of procedural economy are to be examined within the framework of the board's discretion.

1.4 The present board decided to follow the approach set out under point 1.3.2 for the following reasons:

According to their wording, Articles 13(1) and 13(2) RPBA 2020 are both applicable to "any amendment to a party's appeal case". The provision as such however does not define what is to be regarded as an "amendment to a party's appeal case", it is thus an undefined legal term. An "amendment to the party's appeal case" is not identical to an amendment of the patent or of the patent application. Therefore, the provisions and decisions dealing with the latter (see for example G 3/14, OJ 2015, 102) and the definitions given in that context cannot be applied unchanged. However, the question of what can be defined as an "amendment to a party's appeal case", and with that the question of whether Article 13 RPBA 2020 is applicable, can be answered in the systematic context of the provisions guiding appeal proceedings (see also J 14/19, reasons 1.4). In this context, Article 12(3) RPBA 2020 provides that the statement of grounds of appeal and the reply shall contain a party's complete appeal case. Accordingly, all requests shall be specified expressly at this stage. It follows from this that only those requests that have been filed with a party's statement of grounds of appeal or the reply form part of a party's appeal case.

Consequently, a new request filed afterwards with a set of claims that is different to that of the previous requests, is usually to be regarded as an "amendment to a party's appeal case" within the meaning of Article 13 RPBA 2020. Following the systematic context of Articles 12(3) and 13 RPBA, a request in which claims have been deleted compared to the previous requests is therefore a new request and thus usually amounts to an "amendment to the party's appeal case" according to Article 13 RPBA 2020.

As a consequence, auxiliary request 8 is to be regarded as an amendment to the patent proprietor's appeal case and, in the case on file, the board does not see any reason to change this finding in view of normative considerations.

Thus, Article 13(1) RPBA 2020 is applicable in the present case and the admittance of auxiliary request 8 falls within the discretion of the board.

1.5 According to Article 13(1), third sentence, RPBA 2020 the party shall provide reasons for submitting the amendment at this stage of the proceedings.

The respondent argued that there was no indication in the preliminary opinion that the board would deny the inventive step of the product according to auxiliary request 4 (the sole request found to overcome the objections under Article 123(2) EPC). Therefore, the conclusion by the board in the oral proceedings, that the subject-matter of the product claims was obvious, was a new development. Further, the respondent had already indicated in its reply to the grounds of appeal that it was prepared to defend the method of manufacture of the product. Since, however, the method claims of auxiliary requests 5 to 7 were still objectionable under Article 123(2) EPC, it had sought to delete all product claims from the admissible auxiliary request 4 that had been discussed, the method claim of which was not objectionable under Article 123(2) EPC. This course of action was allowable even under the new rules of procedure, as apparent from T 1460/16.

1.6 The board, in exercising its discretion under Article 13(1) RPBA 2020, considered that the respondent had already indicated in its reply to the grounds of appeal that within its auxiliary requests 5 to 7 it was prepared to defend the method claims. Moreover, the appellant had already argued against granted claim 10, now incorporated into method claim 1. The closest prior art for the discussion of the opponent's sole objection against inventive step did not change. The additional comments of the parties in the oral proceedings for the assessment of inventive step merely specified their previous arguments based on D3a or D4 as closest prior art in combination with D10. Consequently, the parties did not raise new objections in this regard. Moreover, the board considered that the deletion of the product claims of auxiliary request 4 prima facie overcame all the objections discussed during the oral proceedings. The board also considered that the method of this new request was prima facie clearly allowable under Articles 123(2) and 56 EPC for the reasons given infra.

1.7 Thus, exercising its discretion in view of the criteria set out in Article 13(1) RPBA 2020, including the impact of the amendment on the factual and legal framework of the appeal, the board admitted auxiliary request 8 into the appeal proceedings.