T 0431/22 - Rule 80 and splitting the independent claims

Key points

•  In opposition, you can split an independent claim as granted into multiple independent claims. Rule 80 is no obstacle to this.
• The Board, in machine translation: "The board essentially follows the considerations of decision T 263/05, in particular the approach that compatibility with Rule 80 EPC must be assessed in the specific individual case and cannot be answered in general terms. According to Rule 80 EPC, the description, claims and drawings can be amended provided that the amendments are occasioned by a ground for opposition under Article 100 EPC. The board cannot derive any guidelines from Rule 80 EPC as to the manner or means by which a patent proprietor intends to overcome a ground for opposition. Amendments that are necessary and expedient to overcome a ground for opposition can be regarded as "occasioned" within the meaning of Rule 80 EPC. If the ground for opposition concerns an independent claim, the board considers that Rule 80 EPC does not preclude amendments that replace it with two or more independent claims, provided that their subject-matter is restricted or changed compared to the granted claim. It appears legitimate for a patent owner to attempt to cover parts of the granted independent claim by means of two or more independent claims in order to overcome a ground for opposition. However, a limit should be drawn if such an approach of replacing an independent claim appears to be an attempt to continue the granting procedure or otherwise an abuse of procedure."
• "Whether a set of claims amended in this way actually overcomes the ground for opposition and, in addition, satisfies the other requirements of the EPC, in particular Article 84 EPC (inter alia with regard to the conciseness of the claims) and 123(2) and (3) EPC, are questions that must be answered separately from compatibility with Rule 80 EPC."
• Note that conciseness of the claims may also refer to the number of claims, i.e. conciseness of the set of claims as a whole. 

EPO 

You can find the link to the decision  after the jump.

https://www.epo.org/en/node/1136072