T 0449/23 - (V) On deleting independent claims

Key points

•  In AR-6, two independent claims are cancelled. Is this a case amendment under Art. 13 RPBA?
• "The board is also aware of the existence of two lines of case law, one according to which a deletion of (an alternative in) an independent claim is always an amendment in the sense of Article 13(2) RPBA and one according to which the deletion of (an alternative in) an independent claim represents an amendment in the sense of Article 13(2) RPBA only if this deletion alters the factual and legal framework of the proceedings (see in this regard Case Law Book, V.A.4.2.2 d))."
• " The board does not agree with the latter approach for the reasons set out in T 2091/18 (reasons, point 4), agreeing with the conclusions set out in T 1569/17 (reasons, point 4.3.1). In summary, Article 12(3) RPBA provides that the statement of grounds of appeal and the reply must contain the complete appeal submissions of a party. According to Article 12(2) RPBA, the grounds of appeal or reply must be directed inter alia to the requests on which the contested decision is based. As the Legal Board of Appeal explained in J 14/19 (reasons, point 1.4 and 1.5), it follows by implication that submissions by the parties that are not directed to the requests contained in the statement of grounds of appeal or reply have the effect of amending the appeal submission."
• "Hence, any new and amended claim request is to be considered as an amendment to the party's appeal case."
• This appears to be the prevailing view in the case law as of now, see e.g. recent decisions T 1993/22 and T 0951/22; and from 2024: T 2084/22; T 0496/19 ; T 1673/22; 
• "In the view of the present board, this is the only reasonable interpretation of an "amendment to a party's appeal case" in the meaning of Article 13(2) RPBA. In the present case, the patent proprietor's appeal case set out in its statement of grounds and its reply was based on the main request and auxiliary request 1. Since according to Article 12(3) RPBA these submissions contain the patent proprietor's complete case, it follows that through its claim requests, the patent proprietor implicitly indicated at the outset of appeal proceedings that it was not interested in, and did not intend to pursue the maintenance of the patent on the basis of only some of the claimed alternatives, e.g. on the basis of claim requests in which certain independent claims, or certain alternatives within independent claims are deleted."
• " In the view of the board, the filing of a new claim request must always have a substantive purpose related to the potential outcome of the patent proprietor's appeal case, since otherwise there would be no need for the patent proprietor to file it and request its admittance into the proceedings. "
• "" If a claim request comprises an independent claim comprising alternatives, and the opponent argues that a certain alternative is not allowable, then, in the absence of further claim requests comprising an independent claim with said alternative deleted, it is legitimate for the opponent to rely on the assumption that, should the independent claim be deemed not allowable on the basis of said alternative, other alternatives will not be pursued. The filing of claim requests shortly before or during oral proceedings before the board, which for the first time lack the alternative to which the opponent's objections were formulated, must be objectively seen as an unforeseeable change of the framework of the appeal proceedings. Even if the subject-matter of the remaining alternatives was encompassed by the claims of previously pending claim requests, the deletion of the contested alternative creates a new object which shifts the discussion in that the amendment "moves the target" out of the focus of the objections that have been debated on appeal. Therefore, the deletion of a critical alternative in a set of claims also represents an amendment of the proprietor's appeal case in terms of Article 13(2) RPBA  [...]. At the final stage of the appeal proceedings, such change of the framework of the debate, which departs from the patent proprietor's previous conduct of the proceedings and for which the opponent cannot be reasonably expected to prepare, can indeed only be accepted in exceptional circumstances justified by cogent reasons and on condition that the opponent has a proper opportunity to react (Article 13(3) RPBA)."
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EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t230449eu1