T 1471/24 - No two-part form, application refused

Key points

• Rule 43(1) provides that "where appropriate" claims shall contain a preamble and a "characterised in that"  part (two-part form).
• "The examining division found that D1 represented the closest prior art to the claimed invention and that the subject-matter of claim 1 was both novel and involved an inventive step over the cited art (see page 5 of the decision). It nonetheless found that the requirements of Rule 43(1) of the Implementing Regulations were not fulfilled since claim 1 was not drafted in the two-part form, despite this being appropriate  ...."
• "It is noted that the purpose of the two-part form of claim is to allow the skilled person to see clearly which features necessary for the definition of the claimed subject-matter are, in combination, part of the prior art. It is established practice before examining divisions not to insist on the two-part form if it is sufficiently clear from the indication of prior art made in the description which features of the claim under examination are known therefrom (see also Guidelines for Examination, F-IV, 2.3.2). "
• "However, this proviso regarding the features known from the prior art, as found by the examining division in point 21.4 of its decision, has not been satisfied in the present application. D1 is indeed acknowledged on page 1 of the description (dated 15 December 2022) yet this acknowledgement fails to identify which specific features of the claim 1 under examination are known from D1. Fundamentally, therefore, in view of the two-part form not having been used in the independent claim, a resultant requirement for the content of the description to include an indication of which features of claim 1 were known from the prior art was not fulfilled."
• "The appellant further argued that the proposed two-part form was incorrect insofar as D1 discloses a set of various flat mirrors rather than, as proposed by the examining division for inclusion in the preamble of claim 1, merely a set of various mirrors. Herein lies a misunderstanding of the appellant. The preamble of a claim drafted in the two-part form should include those features of the claim known in combination from the prior art (Rule 43(1)(a) EPC). In the present case, a set of various mirrors is indeed known from D1, albeit in D1 the various mirrors of this set are flat. That the mirrors of D1 are flat is however irrelevant; D1 without doubt does disclose a set of various mirrors, such that this feature can be included in the preamble of a two-part form of claim."
• The applicant raised an argument based on Article 123(2), which is very interesting, although it was rejected by the Board. "The appellant's further contention in this regard that the generalisation of 'flat mirrors' of D1 to merely 'mirrors' in the preamble of claim 1 offended Article 123(2) EPC is also based on a misunderstanding of this provision of the EPC. Article 123(2) EPC prohibits a European patent application being amended in such a way that it contains subject-matter which extends beyond the content of the application as filed. How the claimed subject-matter, or even the features included in the preamble of a claim, differs from a prior art document is irrelevant for the consideration of meeting the requirement of Article 123(2) EPC. Similarly, as it is the subject-matter of a claim as a whole which is considered when evaluating compliance with Article 123(2) EPC, novel information derivable alone from the preamble of a claim does not give rise to objections under this article; it is the subject-matter of the claim as a whole for which the prohibition of extension beyond the content of the application as filed applies."
• The applicants are two natural persons, not represented by a professional representative. The current applicants are the heirs of the original applicant/inventor, who has deceased. 
• The applicant did not request oral proceedings. The Board issued the decision without oral proceedings or advance communication. 
• There was no auxiliary request with the claim in two-part form, and the appeal was dismissed. The examining division's refusal decision has, hence, become final. This is remarkable, as there was novel and inventive subject-matter.  
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EPO

The link to the decision is provided after the jump.

J 0013/13 - Rule 36 (old) time limit

Key points

• An objection under Rule 43(2) EPC does not trigger a new 24-months time limit for filing a divisional application under Rule 36(1)(b) EPC (old) because it is not based on lack of unity of invention. The introductory phrase "without prejudice to Article 82" in Rule 43(2) EPC means that the rule does not change the application of Article 82 EPC, not that the rule is based on Article 82 EPC. 

EPO  J 0013/13 - link

Sachverhalt und Anträge

I. Die Beschwerde richtet sich gegen die Entscheidung der Eingangsstelle vom 18. März 2013, die europäische Patentanmeldung Nr. XXXXXXXX.X nicht als Teilanmeldung der früheren Anmeldung Nr. YYYYYYYY.Y zu behandeln und den Antrag auf Wiedereinsetzung zurückzuweisen.

T 2355/11 - Multiple independent claims allowed

Key points

• The Examining Division had refused the application as having multiple independent claims in the same category in a way contravening Rule 43(2) EPC. The Board analyzes in detail the legal history and purpose of Rule 43(2) EPC, in particular the exception of Rule 43(2)(c) EPC for alternative solutions and the further requirement for this exception that "it is inappropriate to cover these alternatives by a single claim". 
• The Board finds that the question is not whether it is appropriate to use multiple independent claims, but whether formulating a general independent claim is appropriate. The Examining Division had formulated a single general independent claim.
• The Board finds that such a general claim is not appropriate in this case because the general claim would be problematic under Article 83 EPC: " weil eine Zusammenfassung aller Verfahrensschritte in einem einzigen Anspruch, wie sie von der Prüfungsabteilung unter Punkt 2.1 der Entscheidung angedeutet wurde, möglicherweise gegen Artikel 83 EPÜ 1973 verstoßen würde. Durch die Einschränkung auf die gemeinsamen Aspekte der beanspruchten Verfahren, wie von der Prüfungsabteilung verlangt wurde, würde eine Verallgemeinerung des beanspruchten Verfahrens entstehen, die von den in der Beschreibung beschriebenen Ausführungsbeispiele nicht ausreichend gestützt wäre."
  
  

EPO T 2355/11 - link

Sachverhalt und Anträge

I. Die vorliegende Beschwerde richtet sich gegen die Entscheidung der Prüfungsabteilung, die europäische Patentanmeldung Nr. 04 722 560.2 zurückzuweisen. Die Entscheidung wurde am 17. Mai 2011 zur Post gegeben.

II. In der angefochtenen Entscheidung (Punkt 2 der Entscheidungsgründe) stellte die Prüfungsabteilung fest, dass die Anmeldung drei unabhängige Verfahrensansprüche 17, 18 und 19 enthalte. Jedoch lag keiner der Ausnahmefälle nach Regel 43(2) EPÜ vor. Insbesondere definierten die Verfahrensansprüche nicht drei "Alternativlösungen für eine bestimmte Aufgabe", sondern ein- und dieselbe Lösung. []

T 0830/11 - No Rule 43(2) in opposition

Key points

• The Board decides that Rule 43(2) EPC (multiple independent claims in the same category) is not applicable in opposition. This is based on G 1/91.
• Filing date in 1998, grant in 2007. Now a remittal.

T 0830/11 - link 

8. Appellant's auxiliary request 4

8.1 Auxiliary request 4 comprises three independent claims 1, 2 and 4. Said claims correspond, respectively, to a combination of claims 1, 2 and 3, claims 1, 2 and 4, and claims 1, 2 and 7 of auxiliary request 2.

8.2 Auxiliary request 4 was not admitted by the opposition division into the opposition proceedings under Article 114(2) and Rule 116(2) EPC because the three independent claims did not fulfill the requirements of Article 84 EPC 1973 as to conciseness and of Rule 43(2) EPC concerning "multiple claims" in the same category. In particular, the opposition division held that the claims were all of the apparatus category and related neither to interrelated products nor to different uses nor to alternative solutions to a particular problem. While claims 1 and 2 were considered to relate to different solutions of the problem of miniaturisation, claim 4 was considered to address the different problem of decoupling of the two output ports and common coupling port.

8.3 Under the circumstances, the role of the Board is, primarily, to ensure that the opposition division made a correct application of its discretion and, in particular, that it applied the correct principles when exercising said discretion.

8.3.1 In this respect, it is noted that auxiliary request 4 was filed for the first time during the oral proceedings before the opposition division (cf. minutes of the oral proceedings before the opposition division, page 5, third paragraph). The exercise by the opposition division of its discretion in order to decide on the admissibility of said late filed auxiliary request 4 was thus legitimate.

8.3.2 The Enlarged Board of appeal held in decision G 1/91 (OJ 1992, 253; Headnote) that:

"Unity of invention (Article 82 EPC) does not come under the requirements that a European patent and the invention to which it relates must meet under Article 102(3) EPC when the patent is maintained in amended form. It is consequently irrelevant in opposition proceedings that the European patent as granted or amended does not meet the requirement of unity".

The opposition division noted in section 6.2 of its decision that "the requirements of Art. 84 and Rule 43(2) EPC have to be fulfilled, regardless of the fact that Article 82 EPC only relates to the European patent application". The position adopted by the opposition division is thus tantamount to deprive the decision of the Enlarged Board of any effects, since it leads to the finding that a request including a plurality of independent claims must be rejected for this very reason.

In the Board's judgement, the condition of conciseness of Article 84 EPC 1973, as well as the dispositions of Rule 29(2) EPC 1973 (Rule 43(2) EPC), have to be construed in opposition proceedings in the light of the findings by the Enlarged Board of appeal (cf. decision G 1/91, Reasons, point 4.2) that "the administrative purposes of unity are fulfilled in the main up to the time the patent is granted. ... In view of the object and purpose of both unity and opposition, it seems neither necessary nor appropriate to continue to attach importance to any lack of unity at the opposition stage. Once the examination procedure has been concluded with the grant of a patent, the requirement of unity has fulfilled its administrative function".

The requirements of Rule 29(2) EPC 1973 (Rule 43(2) EPC) should therefore not constitute an obstacle for the patentee to defend the patent in all its branches (cf. decisions T 263/05 (OJ 2008, 329) and T 1416/04, not published).

In order to avoid any misunderstanding, it should be emphasized that the Board does not question the general applicability of Article 84 EPC 1973 as to conciseness and of Rule 29(2) EPC 1973 (Rule 43(2) EPC) in opposition proceedings. The Board only considers that these norms do not apply to sets of claims whose subject-matter was already claimed in the granted version of the patent.

8.4 In conclusion, the Board considers that the opposition division did not correctly exercise its discretion when deciding on the admissibility of auxiliary request 4 then pending.

8.5 Therefore, the Board admits appellant's auxiliary request 4 into the appeal proceedings.

9. Remittal of the case to the opposition division (Article 111(1) EPC)

During the oral proceedings before the Board, the appellant requested that the case be remitted to the opposition division for further prosecution in case that the Board would admit appellant's auxiliary request 4 into the proceedings. The respondent made no comments in this respect.

In view of this, the Board has no reasons to reject the request for remittal.

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 for further prosecution.