T 0561/23 - More on Rule 80

Key points

• Claim 1 of the auxiliary request at issue is amended by two alternative features that serve to make the claim novel. The features are taken from the dependent claims as granted.
• At issue is whether this complies with Rule 80.
• The Board, in machine translation: "According to the case law of the Boards of Appeal, it is generally permissible to replace a granted independent claim, which was deemed not novel or inventive in opposition proceedings, with several independent claims, provided that each of these is directed to subject-matter already defined in the granted dependent claims (see, e.g., T 1416/04, point 5.1; T 263/05, points 4.7 and 4.8; T 993/07, point 1.5; T 1679/09, points 4.2 and 4.3; T 1025/14, point 3.2; T 1191/22, point 2.4). The reason for this is that the patent proprietor must be able to maintain potentially allowable subject-matter already included in the granted set of claims."
• The phrase "provided that each of these is directed to subject-matter already defined in the granted dependent claims" seems a sufficient condition, but not necessarily a necessary requirement.
• "Granted independent claim 1 was deemed not to be novel within the meaning of Article 54(3) EPC during the opposition proceedings. It is therefore permissible to replace it with several independent claims relating to different embodiments of the blind system already defined in the granted dependent claims. "
• " The respondent [opponent] argued that alternatives (a) and (b) had to share a common general concept to comply with the requirements of Rule 80 EPC. "
• The Board does not agree: "Rule 80 EPC merely requires that an amendment be prompted by a ground for opposition, i.e., that it aims to overcome such an objection and thus prevent the patent from being revoked. While the lack of novelty in claim 1 may give rise to an objection of lack of unity, lack of unity does not constitute a ground for opposition. Furthermore, in opposition proceedings, the patent proprietor does not have the option of pursuing different inventions by means of divisional applications (see also T 1416/04, supra, point 5.1; T 263/05, supra, point 4.8). Under these circumstances, there is no reason to require the patent proprietor to choose between several dependent claims parallel to claim 1."
• The Board does not cite G 1/91, which is remarkable.
• The novelty-destroying document for the higher-ranking request was a prior right under Art. 54(3). However, "Documents cited under Art. 54(3) should be disregarded in the evaluation of unity of invention since they cannot anticipate the inventive concept of the application under examination." (Guidelines F-V, 3.1.1)

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t230561du1