T 2377/22 - Multiple independent claims in opposition

Key points

• The Board, in translation: "auxiliary request 2 contains - in contrast to the granted patent, which contains only a single claim  -  three independent claims, each directed to a cosmetic oil-in-water (O/W) emulsion (claims 1, 13, and 24). Independent claims 1, 13, and 24 were formed from granted claim 1 by incorporating the features of one of the dependent claims 2, 3, and 4, respectively."
• "The appellant  [opponent] referred to decision T 0181/02. Point 3.2 of that decision states that it is normally sufficient to amend an independent claim by incorporating one further feature in order to respond "in sachdienlicher und erforderlicher Weise"  to an objection of lack of novelty. Additional independent claims are only necessary in exceptional situations."
• "However, the same point in the cited decision also points out that this may be the case under certain circumstances, for example where two granted dependent claims (e.g., claims 2 and 3) are joined in parallel to a single independent claim (e.g., claim 1). In that case, the filing of two independent claims (e.g., containing the features of claims 1 and 2 and of claims 1 and 3) would be possible. This reasoning is essentially consistent with that in decisions T 0223/97 (point 2.2 of the Reasons) and T 0428/12 (point 3 of the Reasons). The board finds that this also applies to the present case and agrees with the interpretation of Rule 80 EPC that can be derived from those decisions."
• As a comment, the term "sachdienlich" comes from Rule 79(3) EPC. 

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/de/boards-of-appeal/decisions/t222377du1

Rule 80 EPC

8. Auxiliary request 2 contains—in contrast to the granted patent, which contains only a single claim—three independent claims, each directed to a cosmetic oil-in-water (O/W) emulsion (claims 1, 13, and 24). Independent claims 1, 13, and 24 were formed from granted claim 1 by incorporating the features of one of the dependent claims 2, 3, and 4, respectively.

9. The appellant argued that not all of these amendments were motivated by a ground for opposition. While each amendment made to the amended independent claims was in itself a response to the ground of lack of novelty, this did not require the inclusion of three different features (dependent claims 2, 3, and 4 of the granted patent) in granted claim 1, and the pursuit of three independent claims instead of one. Rather, it would have been sufficient to distinguish granted claim 1 from the prior art by including a single additional feature. The additionally introduced independent claims 13 and 24 were therefore motivated neither by the ground of lack of novelty nor by any other ground for opposition. This argument was consistent with decision T 0181/02. Therefore, the amendments were inadmissible (Rule 80 EPC).

10. In the respondent's view, Rule 80 EPC does not prescribe how and to what extent amendments must be made to respond to a ground for opposition. Therefore, it is also possible to respond, for example, to an objection of lack of novelty by incorporating various additional features from a single independent claim. This applies, in particular, to ensure a legitimate, broadest possible scope of protection.

11. The Chamber concludes as follows:

11.1 Rule 80 EPC provides that a patent may be amended during opposition proceedings, provided that the amendments are prompted by a ground for opposition.

11.2 In the present auxiliary request 2, granted independent claim 1 was amended by incorporating further features from three different dependent claims. This resulted in three independent product claims, each of which is more restricted than granted claim 1 and also novel over the cited prior art. The amendments as such are therefore each motivated by one ground for opposition, namely the objection of lack of novelty.

11.3 In its statement of grounds of appeal (last paragraph of page 2), the appellant referred to decision T 0181/02. Point 3.2 of that decision states that it is normally sufficient to amend an independent claim by incorporating a further feature in order to respond appropriately and appropriately to an objection of lack of novelty. Additional independent claims are only necessary in exceptional situations.

11.4 However, the same point in the cited decision also points out that this may be the case under certain circumstances, for example where two granted dependent claims (e.g., claims 2 and 3) are joined in parallel to a single independent claim (e.g., claim 1). In that case, the filing of two independent claims (e.g., containing the features of claims 1 and 2 and of claims 1 and 3) would be possible. This reasoning is essentially consistent with that in decisions T 0223/97 (point 2.2 of the Reasons) and T 0428/12 (point 3 of the Reasons). The board finds that this also applies to the present case and agrees with the interpretation of Rule 80 EPC that can be derived from those decisions.

12. Auxiliary request 2 therefore meets the requirements of Rule 80 EPC.