T 0364/18 - Extent of opposition; 7 independent claims after amendment

Key points

•  This decision was already published in May 2021 but is still interesting.
• In this opposition appeal, with the opponent filing the appeal, the Board considers the main request to be not novel and turns to the auxiliary request.
• " The notice of opposition, first paragraph, expressly requested revocation of claims 1-5, 8, 9, 11, 15-17, 19 and 20. This request was repeated at the start of oral proceedings before the opposition division [] and again upon appeal []. The board sees herein an express statement that the patent is opposed and the decision is appealed only in as far as the claims mentioned are concerned, thus defining the extent of opposition according to Rule 76(2)(c), respectively the extent to which decision is to be amended according to Rule 99(2) EPC. Consequently, and in accordance with the principle of ne ultra petita the board sees itself limited to examining the patent only for the claims opposed." 
• " The Auxiliary Request is directed at the subject-matter of unopposed granted claims 6, 7, 10, 12 to 14 and 18, in the form of independent claims 1 to 7 combining the features of respective ones of these claims with granted claim 1. As it is thus directed at the subject-matters not opposed, and the board has no power to examine such subject-matter, the patent must be maintained in this limited form." 
• Having 7 independent claims, all for a hydraulic machine (see the claims here, are indeed perfectly fine in opposition in these circumstances.
• " the board does not have the power to examine patentability of the Auxiliary Request. Therefore, the patent can be maintained in an amended form on the basis of the Auxiliary Request pursuant to Article 101(3)(a) EPC, provided that the description is adapted to the amended claims." 

EPO 

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/t180364eu1.html

4. Auxiliary Request

4.1 The notice of opposition, first paragraph, expressly requested revocation of claims 1-5, 8, 9, 11, 15-17, 19 and 20. This request was repeated at the start of oral proceedings before the opposition division (minutes, point 2, second paragraph) and again upon appeal (statement of grounds, 1st page). The board sees herein an express statement that the patent is opposed and the decision is appealed only in as far as the claims mentioned are concerned, thus defining the extent of opposition according to Rule 76(2)(c), respectively the extent to which decision is to be amended according to Rule 99(2) EPC. Consequently, and in accordance with the principle of ne ultra petita the board sees itself limited to examining the patent only for the claims opposed.

4.2 The Auxiliary Request is directed at the subject-matter of unopposed granted claims 6, 7, 10, 12 to 14 and 18, in the form of independent claims 1 to 7 combining the features of respective ones of these claims with granted claim 1. As it is thus directed at the subject-matters not opposed, and the board has no power to examine such subject-matter, the patent must be maintained in this limited form.

5. In conclusion, the board holds that the subject-matter of claim 1 of the Main Request lacks novelty over the disclosure of document E1', Article 54 EPC. Further, the board does not have the power to examine patentability of the Auxiliary Request. Therefore, the patent can be maintained in an amended form on the basis of the Auxiliary Request pursuant to Article 101(3)(a) EPC, provided that the description is adapted to the amended claims.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the opposition division with the order to maintain the patent with the following claims and a description to be adapted thereto :

Claims: No. 1-7 of the Auxiliary Request filed with letter dated 20 August 2018.