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.

T 1772/23 - More on Rule 80

Key points

• The Opposition Division had decided that the amendments leading to Auxiliary Request 2 did not meet the requirements of Rule 80 EPC. ... The set of claims of auxiliary claim 2 comprises four independent claims [by splitting claim 1]. 
• The proprietor appeals.
• The Board in translation: "The Board does not follow this view, but considers the amendments to be in conformity with Rule 80 EPC."
• "Rule 80 EPC stipulates as its sole condition for amendments that they must represent a bona fide attempt to overcome a ground for opposition and thus prevent the revocation of the granted patent."
• It must be noted that Rule 80 adds "even if that ground has not been invoked by the opponent".
• "In the present case, in all four independent claims of auxiliary request 2, the claimed method [of granted claim 1] is restricted by additional features from dependent claims, which is to be regarded as an attempt to distinguish the method claimed in the claims from the method known from E1."
• "The excessive use of and/or formulations in the dependent claims of a claim set can make it difficult to anticipate potential future withdrawal positions in the granted claim set. This can also, under certain circumstances, lead to questions as to whether the withdrawal positions were originally disclosed. However, these are questions that would have to be examined under the provisions of Articles 84 and 123(2) EPC and do not affect the assessment of the amendment under Rule 80 EPC."
• " Furthermore, the methods defined in the four independent claims of auxiliary request 2 do not necessarily have to be based on alternative, mutually exclusive embodiments. ... According to the settled case law of the Boards of Appeal, the existence of two alternative embodiments in the patent in suit may lead to the admissibility of using two independent claims if the scope of protection is limited. However, this does not imply that this criterion is mandatory, i.e., that only in the case of several alternatives mentioned in the patent in suit may these be pursued in independent claims. On the contrary, it has already been established in T0262/05 (Reasons in Section 4 to Rule 59a EPC, which corresponds to the current Rule 80 EPC) and T0123/22 (Reasons 3.12) that the replacement of a single granted independent claim with two independent claims is not only permissible in exceptional cases, but that in each specific case the amendments must be individually assessed to determine whether they constitute an appropriate and necessary response to avoid the revocation of the patent in suit on the basis of a ground for opposition."
•  " The Opposition Division is correct in asserting that the submission of more than 100 auxiliary requests can lead to an overload of the proceedings ... However, this is a question to be examined when these applications are admitted, not whether the respective amendments comply with the requirements of Rule 80 EPC. This must be clearly distinguished, as explained in detail, for example, in T0123/22 (see Reasons 3.7 and 3.10). The Board therefore sees no reason why the amendments leading to the claim set of auxiliary request 2 should not be in compliance with Rule 80 EPC and therefore does not follow the decision of the Opposition Division."
• The opponent had withdrawn the opposition during the appeal stage.
• The case is remitted back to the OD.
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EPO 

The link to the decision is provided after the jump.

T 1975/23 - Splitting the independent claim in opposition

Key points

• The Board, in translation: "It was argued [by the opponent] that [auxiliary request 3 ] did not meet the requirements of Rule 80 EPC because in the set of claims of auxiliary request 3, the independent process [] claim of the patent was replaced by two independent process [] claims.
• The board finds no violation of Rule 80 EPC. The situation is comparable to that decided in case T 2290/12. In that case, the opposition division concluded that the subject-matter of the patent's sole independent claim lacked an inventive step. The patent proprietor then attempted to cover parts of the granted claim it considered inventive by means of several independent claims.
• The present case is similar. The board agrees with the observations in point 4.1 of the reasons for decision T 2290/12. The reasons that led to the non-admission of requests in decisions T 610/95 and T 223/97 cannot be directly applied to the present case. The objection under Rule 80 EPC is therefore unconvincing."
• The board explained in point 4.1 [of T 2290/12] that this approach was, in principle, justifiable as long as there was no abuse of process and no unreasonably large number of independent claims was filed. 
• Since inventive step constitute[s] a ground for opposition, there was no violation of Rule 80 EPC.

EPO 

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

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.

T 2108/22 - On Rule 80 and unity

Key points

• The Board, in the headnote in translation: "The extent to which the replacement of a claim with a claim containing multiple alternatives is permissible under Rule 80 EPC must be examined on a case-by-case basis. After weighing the conflicting interests of the parties, it must be examined whether the multiplication of alternatives in the claim itself constitutes a relevant and necessary amendment"
• As a comment, the case-by-case analysis seems correct, although Rule 80 EPC is not the relevant provision for balancing interests because it is not a discretionary rule.
• "The preparatory work also confirms this (see CA/12/94 Rev 1, No. 6.2 of the Reasons: "The new Rule 57a proposes a lex specialis for amendments in opposition proceedings. It is a purely substantive regulation of the right to amend. No regulation is made here about the point in time up to which amendments are permissible [...]"). Whether the requirement of Rule 80 EPC is met can therefore - like other substantive rules - only be taken into account in decisions on the admission of claims in the context of the prima facie allowability of a claim set. " (T 0123/22, see also OJ 1995, p.416). 
• Hence, as explained in T 0256/19: “Rule 80 EPC represents a non-discretionary provision of the EPC that relates to the allowability of a patent as amended rather than to admissibility.”
• As explained in that case: "discretion to disregard an amended version of a patent in inter partes proceedings can only emanate from Article 123(1) EPC in conjunction with Rule 79(1) and/or 81(3) EPC and, in case of arranged oral proceedings, with Rule 116(2) EPC (see also T 966/17, Catchword 1; R 6/19, Reasons 6 and 7).”
• Rule 81(3) EPC: "the proprietor of the European patent shall, where necessary, be given the opportunity to amend, where appropriate, the description, claims and drawings". This requirement also applies to the admissibility of amended claims filed by the proprietor of their own motion (see my post on T 406/86)
• As explained in T 0123/22: " the board agrees with decision T 431/22, point 1 of the Reasons, according to which Rule 80 EPC does not preclude such an amendment provided that the subject-matter of the new independent claims is restricted or modified compared to the subject-matter of the contested claim. As explained in T 431/22, it is in principle legitimate for a patent proprietor to try to cover parts of the contested independent claim in order to overcome a ground of opposition, possibly by means of two or more independent claims (see in this regard also T 2290/12, point 4.1 of the Reasons, third paragraph). As explained in T 99/04, point 13 of the Reasons, the purpose of Rule 80 EPC is not to prevent a patent proprietor from maintaining the patent as broadly as possible, taking into account the grounds of opposition. "
•  Let's have a look at the "case-by-case" analysis in the case at hand: "The addition of even a single one of the two OR alternatives limiting the claimed subject-matter, e.g., alternative A, to granted independent claim 1 is to be considered a sufficient and conclusive response to a novelty objection. ... The addition of the features of second alternative B, which is substantively completely different from first alternative A, cannot help to overcome the novelty objection that led to the addition of first alternative A; i.e., the addition of the features of second alternative B is neither relevant nor necessary. The addition of alternative B to amended claim 1 containing alternative A cannot therefore be motivated by a ground for opposition (as required by Rule 80 EPC), but only by the patent proprietor's desire for "appropriately broadest possible protection" (P1, page 7, third paragraph). However, an amendment aimed at achieving the widest possible scope of protection is not in accordance with the requirement of Rule 80 EPC."
• This reasoning looks perfectly generic. I see no specific facts of the case in it.
• It would have been helpful if the Board had engaged with G1/91 (or had referred a question to the EBA, if the Board considers that dealing with multiple inventions (lacking unity of invention) in opposition appeal is too much work in the current tight timelines for appeals). 

EPO 

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

T 0123/22 - Rule 80

Key points

• The proprietor appeals against the revocation of the patent. Claim 1 as granted was held to be not novel. The proprietor in the main request splitted up claim 1 into three independent claims.
• The opponent objects under Rule 80 EPC.
• The Board turns to T295/87. "In this regard, it should first be noted that Rule 57a EPC 1973 - the predecessor provision to Rule 80 EPC - was only introduced by the Administrative Council's decision of 13 December 1994 (see (OJ EPO 1995, [page] 9 ff.). Accordingly, T 295/87 does not directly concern this provision, but rather the question of whether the amendment made to the patent claims was necessary and appropriate within the meaning of Rules 57 and 58 EPC 1973. For this reason alone, it seems questionable whether the statements made in T 295/87 [point 3]- and adopted in some later decisions - can be applied to the application of Rule 80 EPC."
• T 295/87 seems to have concerned the addition of dependent claims.
• " the board called upon to decide the present case is of the opinion that no general guidelines can be derived from Rule 80 EPC as to the form in which a patent proprietor may amend claims in order for this amendment to be regarded as being prompted by a ground for opposition (see also T 2982/18, point 2.4 of the Reasons and T 359/13, point 1.1 of the Reasons, last paragraph). In particular, Rule 80 EPC makes no distinction as to whether the additional features included in an opposed claim originate from dependent claims or from the description. The only relevant factor for assessing the requirement of Rule 80 EPC is whether the amendment made is prompted by a ground for opposition. In this case, it must be examined whether the amendment is to be regarded as a serious attempt to counter a ground for opposition (see T 750/11, point 2.3.2 of the Reasons on the latter)."
• "Whether the additional features included in an independent claim under attack originate from dependent claims or from the description can affect the complexity of the amendment and play a role in discretionary decisions to admit late submissions. However, such admission decisions must be distinguished from the application of Rule 80 EPC. Rule 80 EPC is not designed as a discretionary rule - as is clear in the German version from the use of the imperative present tense - but concerns a substantive requirement for the allowability of an amendment made in opposition proceedings. The preparatory work also confirms this (see CA/12/94 Rev 1, No. 6.2 of the Reasons: "The new Rule 57a proposes a lex specialis for amendments in opposition proceedings. It is a purely substantive regulation of the right to amend. No regulation is made here about the point in time up to which amendments are permissible [...]"). Whether the requirement of Rule 80 EPC is met can therefore - like other substantive rules - only be taken into account in decisions on the admission of claims in the context of the prima facie allowability of a claim set. Prima facie allowability, like the complexity of the amendment, can be a criterion for the exercise of discretion in the admission of late submissions."
• As far as I know, Administrative Council document CA/12/94 is not public. I leave the issue of citing non-public preparatory documents as a basis for a legal interpretation aside here because largely the same statement was published in the Notice in OJ 1995, p.416: ""  [New Rule 57a] addresses the purely substantive aspects of the proprietor´s entitlement to amend his patent, and does not specify the point in time up to which amendment is allowed: here existing practice would remain unchanged"." (link to weblog post)
• The key part of Rule 80 is "even if that ground has not been invoked by the opponent", which puts a gloss on "necessary"  in Rule 81(3) EPC (not the "appropriate" requirement in Rule 81(3)). See my post on T256/19.
• "As regards the replacement of an independent claim affected by a ground of opposition by several independent claims, the board agrees with decision T 431/22, point 1 of the Reasons, according to which Rule 80 EPC does not preclude such an amendment provided that the subject-matter of the new independent claims is restricted or modified compared to the subject-matter of the contested claim. As explained in T 431/22, it is in principle legitimate for a patent proprietor to try to cover parts of the contested independent claim in order to overcome a ground of opposition, possibly by means of two or more independent claims (see in this regard also T 2290/12, point 4.1 of the Reasons, third paragraph). As explained in T 99/04, point 13 of the Reasons, the purpose of Rule 80 EPC is not to prevent a patent proprietor from maintaining the patent as broadly as possible, taking into account the grounds of opposition. "
• "As with the inclusion of features from the description, the replacement of an independent claim by several other independent claims may affect the complexity of the amendment and play a role in discretionary decisions to admit late-filed submissions. However, as explained in point 3.7 above, such admission decisions must be distinguished from the application of Rule 80 EPC. Also to be distinguished from Rule 80 EPC is the examination of whether the requirements of Article 84 EPC are met (on the latter, see T 2290/12, point 4.1 of the Reasons, last paragraph). 
• "In summary, the question of whether the replacement of an independent claim by several other independent claims within the meaning of Rule 80 EPC was caused by a ground for opposition cannot be answered in the negative in principle [...]"
• As a comment, G1/91 can be mentioned: lack of unity is no restriction in opposition. Rule 80 EPC can not be used to undermine G1/91 by the backdoor.
• See also T 0431/22: "a limit should be drawn if such an approach of replacing an independent claim [with multiple independent claims] appears to be [...] an abuse of procedure."
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EPO 

The link to the decision and an extract of it can be found after the jump.

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.

T 2391/18 - No need to tidy up the description in opposition

Key points

•  "The allegedly required amendment to paragraph [0017] does not relate to any amendment to the claims during opposition proceedings. Instead, as set out above, this amendment relates to an alleged inconsistency that already existed in respect of a feature present in the granted claims."
• " Such an amendment to the description is not appropriate in opposition proceedings or opposition appeal proceedings. (....) [T]here is no reason for the Board (or the Opposition Division) to come to the conclusion that the requirements of the Convention (in particular the requirements of Article 84 EPC) within the meaning of Article 101(3)(a) EPC are not fulfilled. The reason for this is the conclusion of the Enlarged Board in G 3/14: in considering whether, for the purposes of Article 101(3) EPC, a patent as amended meets the requirements of the EPC, the claims of the patent may be examined for compliance with the requirements of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC."
•  "Since in a case such as the present one the amendment to the claims did not introduce an issue of non-compliance with Article 84 EPC, an opposition division or a board of appeal cannot examine the claims of the patent for compliance with the requirements of Article 84 EPC, including the requirement of "support by the description" in the second sentence of this provision. There is thus no reason for the Board to object to the wording of paragraph [0017] of the amended description as filed during the oral proceedings before the Board."

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1111/19 - Correction of errors and Rule 80

Key points

•  G 1/10 held that Rule 140 is not available for correcting errors in the Druckexemplar after the grant.
• G 1/10 added that "it is always open to a patent proprietor to seek to amend his patent during opposition or limitation proceedings and such an amendment could remove a perceived error. Such an amendment would have to satisfy all the legal requirements for amendments including those of Article 123 EPC.".
• The present decision clarifies that any such amendments must also comply with Rule 80 EPC.
• Hence, a main request wherein only errors were corrected, was not admitted by the Board.
• This is in line with Guidelines H-VI, 2.1.1.1 stating that a correction of an error in opposition will be admitted "if the correction is part of an amendment going beyond the mere removal of an error, namely an amendment occasioned by a ground for opposition".
• The Guidelines add that: "Therefore, if the proprietor files an amended specification fulfilling the requirements of Rule 80, they can additionally request the correction of an obvious error under Rule 139 (see T 657/11). "
• In the present case, the main request consists of only corrections of errors in the patent.
The Board, in machine translation: " The main request was not admitted to the appeal proceedings (Article 13 (1) RPBA 2020). Even if the requirements of Rule 139 EPC were met, none of the corrections made constitute an amendment prompted by a ground for opposition under Article 100 EPC. The changes made in the main request are therefore not in line with Rule 80 EPC, which applies independently of Rule 139 EPC."
• " Corrections under Rule 139 EPC represent a special case of an amendment within the meaning of Article 123 EPC (see G 3/89 and G 11/91, margin no. 1). The Implementing Regulations (see Article 123(1) EPC, first sentence) explain how and under what conditions these amendments are possible. The other provisions to be observed for amendments to the European patent application can be found in Rule 137 EPC, those for amendments to the European patent in Rule 80 EPC. In addition, Rule 139 EPC contains provisions relating to the correction of obvious errors in documents filed with the European Patent Office."
• "Even if Rule 139 EPC applies independently of Rule 80 EPC, this does not mean that the requirement of Rule 80 EPC need not be met. If the two provisions are applied independently of one another, this means for the correction of documents filed with the European Patent Office in opposition or opposition appeal proceedings that both provisions must also be fulfilled independently of one another. Rule 139 EPC does not in itself provide a sufficient legal basis for amending the claims of a European patent."
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The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 2487/17 - Adding independent claim in opposition permitted

 Key points

• The Board, in translation: " Rule 80 EPC - The opposition division found in its decision that the request met the requirements of Rule 80 EPC. The appellant-opponent contradicted this. It took the view that the inclusion of independent claim 16, which was additional to the granted version of the patent, and of claims 17 to 22 dependent thereon, violated the requirements of Rule 80 EPC.
• " The Board does not find the objection convincing. Claim 1 of auxiliary request 2 was amended compared to claim 1 of the version as granted in that instead of the initially claimed composition, the use of the same as a shape-memory material is now claimed. The dependent claims 2 to 9 have been modified analogously and thus also relate to said use.
• " Furthermore, an independent claim 16 has been added, which differs from claim 1 as granted in that it includes the additional feature that the curable structural adhesive is a polyurethane composition. Claims 17 to 22 dependent thereon, which are also appended, correspond to granted dependent claims 2, 3 and 5 to 9.
• " The division of claim 1 as granted into a use claim, which relates to the entire originally defined composition, and a product claim, which relates to a restricted definition of the originally defined composition, is, in the board's view, an expedient reaction of the appellant- patent proprietor in order to respond to the objection of lack of novelty raised and thus avoid the revocation of the patent. Since both the dependent claims 2 to 9 and the dependent claims 17 to 22 have an equivalent in the granted patent, namely in the dependent claims 2 to 9, no claims have been included that do not already have an equivalent in the granted version of the patent had patents.
• " The requirements of Rule 80 EPC are therefore met." 

T 2487/17 - link after the jump.

T 0926/17 - (II) Rule 80

Key points

•  The OD maintains the patent in amended form based on AR-1. The opponent appeals. In their written submissions the appellant-opponent objects to the admissibility of the upheld version (auxiliary request 1 before the opposition division) ... as late filed.
• The Board gives as preliminary opinion that AR-1 is admissible. The opponent has no substantive comments on the point before the oral proceedings before the Board and the Board admits* the request. Nevertheless, the Boards reasoning seems to call for some comments.
• The Board: " The Board notes that Rule 80 EPC does not specify the point in time up to which amendment is allowed. Rule 80 EPC creates the legal basis for amendments, and Rule 116(2) EPC governs the deadline for doing so" 
• Rule 80 EPC was introduced as Rule 57a EPC 1973  in 1995. The official explanatory remarks are set out in Notice in OJ 1995, p.416. 
• It is correct that " Rule 80 EPC does not specify the point in time up to which amendment [in opposition] is allowed". As set out in said Notice, "  [New Rule 57a] addresses the purely substantive aspects of the proprietor´s entitlement to amend his patent, and does not specify the point in time up to which amendment is allowed: here existing practice would remain unchanged".
• The existing practice in 1995 was that limitations on the amendments "were justified by reference to Rules 57(1) and 58(2) [EPC 1973]" (as the Notice says) which provisions are now R.79(1) and R.81(3) EPC (see T256/19).
• I don't think that Rule 80 EPC creates the legal basis for amendments [in opposition]. The legal basis is Article 123(1), as discussed in R6/19.
• I'm not sure if the Board wished to imply that it could overturn a decision of an OD to admit an auxiliary request. Whether the Boards have such power seems to be controversial. 
• *) : The Board decided "not to overturn the decision of the opposition division to admit the (now) main request".

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1131/18 - Clerical errors and Rule 80

Key points

•  The Board: "The Board considers that the changes in claims 1 and 3 were only typographical or editorial changes that do not result in any amendment of the subject-matter claimed. They have no incidence on the subject-matter claimed and do not introduce any unclarity, as argued by the appellant. Consequently, the main request is admitted into the appeal proceedings (Article 13(2) 2020 and Rule 80 EPC)."
• The claim amendments at issue were: 
• Hence, in claim 1 the feature "in a ratio of 2 : 1" was modified by the suppression of the empty spaces to "in a ratio of 2:1".
• In claim 3, the feature "a butyl methacrylate-2-dimethylaminoethyl)methacrylate-methylmethacrylate copolymer (1:2:1)" was modified by the addition of a bracket (shown in bold and underlined) to "a butyl methacrylate-2-(dimethylaminoethyl)methacrylate-methyl-methacrylate copolymer (1:2:1)" (modification shown in bold and underlined).
• The present decision seems to provide a new approach to the prohibition of "tidying up" the claims under Rule 80 EPC.

EPO T 1131/18 - 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0914/18 - Correction of error in opposition

 Key points

• The patentee corrects a clerical error in claim 1 as granted in AR-7. The error and the correction are immediately obvious, the error is truly a simply clerical error.
• The Board: “As the correction of the obvious error, made in the set of claims filed on 4 May 2015 which underlies the application documents on which the grant of the European patent is based, concerns auxiliary request 7, Rule 139 EPC rather than Rule 140 EPC applies (see G 1/10, OJ EPO 2013, 194, point 9). ”
• G 1/10, r.9: “9. In the Enlarged Board's judgment a patent applicant (or, subsequently, a patent proprietor) has adequate means at his disposal to ensure his patent as granted is in the exact form he wants it to be without any need to invoke Rule 140 EPC. ...”
• “As the filing of auxiliary request 7 was occasioned by a ground for opposition under Article 100 EPC, the requirements of Rule 80 EPC are fulfilled. However, these requirements are irrelevant in the context of Rule 139 EPC (see G 1/10, point 13). The correction is thus allowable.”
• G 1/10, r.13: “13. The referring decision relates to opposition proceedings. The Enlarged Board considers Rule 140 EPC is not available for correcting patents, including during opposition or limitation proceedings. However, it is always open to a patent proprietor to seek to amend his patent during opposition or limitation proceedings and such an amendment could remove a perceived error. Such an amendment would have to satisfy all the legal requirements for amendments including those of Article 123 EPC. ...”
• It is not clear to me where in G 1/10 the Enlarged Board says that Rule 80 does not apply. 
• However, T0657/11, r.3.4 already explained that  "such mistakes or errors ... in the unamended part of the text in question may only be removed by way of a correction pursuant to Rule 139 EPC, which provision and the specific requirements defined therein apply independently from Rule 80 EPC." 

T 0914/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t180914eu1.html

4.2.3 Concerning the correction of the obvious error in claim 1 of auxiliary request 7 from "immunotritional" to "immunonutritional", the board notes the following. The term "immunotritional" is clearly erroneous. From the wording of claim 1 of auxiliary request 7, as well as claim 1 as granted, it is obvious that the same composition as defined before is to be administered ("and wherein said [...] composition"). It is thus immediately evident from the wording of claim 1 as granted how the correction of the obvious error is to be made, i.e. by the replacement of the term "immunotritional" with "immunonutritional".

As the correction of the obvious error, made in the set of claims filed on 4 May 2015 which underlies the application documents on which the grant of the European patent is based, concerns auxiliary request 7, Rule 139 EPC rather than Rule 140 EPC applies (see G 1/10, OJ EPO 2013, 194, point 9). As the filing of auxiliary request 7 was occasioned by a ground for opposition under Article 100 EPC, the requirements of Rule 80 EPC are fulfilled. However, these requirements are irrelevant in the context of Rule 139 EPC (see G 1/10, point 13). The correction is thus allowable.

T 0256/19 - Appellate review of Rule 80 decision

 Key points

• The Board: “Rule 80 EPC represents a non-discretionary provision of the EPC that relates to the allowability of a patent as amended rather than to admissibility.” The Guidelines specify inadmissibility as consequence. 
• This is probably relevant for the appellate review of the decision. Indeed, the Board finds that: “in conclusion, contrary to [the opponent's] request, auxiliary request 1 cannot be disregarded in these proceedings. However, given that the underlying amendment does not lend itself to counter any invoked opposition ground in the present case (cf. point 4.5 above), claim 1 of auxiliary request 1 is not occasioned by such a ground for opposition and is thus not allowable under Rule 80 EPC.”
• The Board bases its analysis on the similar wording of Rule 80 and Article 123(2) EPC. Further, “This conclusion is also corroborated by the preparatory work to Rule 80 EPC (cf. notes on the introduction of Rule 57a EPC 1973, i.e. the predecessor of Rule 80 EPC, in Notice dated 1 June 1995, OJ 1995, 409; see in particular pages 416 and 417, point 2) and thus in line with the legislator's intent (board's emphasis):  "New Rule 57a [Rule 80 EPC] ... addresses the purely substantive aspects of the proprietor's entitlement to amend his patent, and does not specify the point in time up to which amendment is allowed ... Its restriction of the right to amend is in line with the sense and purpose of opposition proceedings, and does away with the need for a discretionary provision like Rule 86(3) [Rule 137(3) EPC]".
• As a comment, I think this Notice requires careful interpretation. Clearly, the OD still has the discretion to hold late-filed amendments inadmissible even if they comply with Rule 80.
• In the board's view, discretion to disregard an amended version of a patent in inter partes proceedings can only emanate from Article 123(1) EPC in conjunction with Rule 79(1) and/or 81(3) EPC and, in case of arranged oral proceedings, with Rule 116(2) EPC (see also T 966/17, Catchword 1; R 6/19, Reasons 6 and 7).”
• I note that also Rule 80 needs a legal basis in some Article of the EPC.
• Quite possibly T 0406/86 is also relevant. Note that the phrase “the proprietor of the European patent shall, where necessary, be given the opportunity to amend, where appropriate, the description, claims and drawings” currently in Rule 81(3), interpreted in T 406/86, recently recalled in R6/19, originates from the original EPC 1973 rules. 
• Particularly relevant is T 295/87 hn.2: “Amendments to the text of a granted patent during opposition proceedings should only be considered as appropriate and necessary in the sense of Rules 57(1) and 58(2) EPC [1973] and therefore admissible if they can fairly be said to arise out of the grounds of opposition. An amendment proposing new claims having no counterpart in the granted patent, which is not in response to a ground of opposition, is not admissible”
• The subsequent introduction of (now) Rule 80 in 1995 codifies the above case law, with the important addition of "even if that ground has not been invoked by the opponent".
• The consequence of inadmissibility hence originates in old case law. 
• It may be asked whether the consequence under e.g. Rule 137(5) first and/or second sentence is inadmissibility or non-allowability.
• Note that where inadmissibility is solely based on substantive considerations, the  Board's review is not limited by G7/93. 

T 0256/19
https://www.epo.org/law-practice/case-law-appeals/recent/t190256eu1.html

4. Auxiliary request 1: claim 1 - Rule 80 EPC

4.1 Claim 1 of auxiliary request 1 differs from claim 1 of the main request in that here the word "sound" is inserted between the words "voice" and "portion" of feature (e).

4.2 The appealed decision states that the "first auxiliary request does not fulfill [sic] the requirements of Rule 80 EPC, and thus is not admissible" (see point 3.1 of the Reasons; board's emphasis; see also point 6, second paragraph of the Reasons) and refers in that context to the Guidelines for Examination in the EPO (see point 3.1.1, last sentence of the Reasons).

4.3 The board understands from the above statement that the opposition division did not admit the present auxiliary request into the opposition proceedings ("first auxiliary request [...] is thus not admissible"). In that regard, it is worth noting that the referred Guidelines for Examination (edition of November 2017, H-II, 3.2, second paragraph) have the following wording (board's emphasis):

"... where a 'clarification' can be considered as a limitation of the claim, it would be admissible under Rule 80 and could form the basis for maintaining the patent in amended form ...".

The board can only surmise that the opposition division assumed that, if an amendment made to a claim of a granted patent can be considered to be a limitation of that claim, the set of claims (such as the present first auxiliary request) containing that claim is to be admitted into the proceedings, otherwise it is not to be admitted. This suggests that Rule 80 EPC would relate to the matter of admittance (implying a discretionary decision) rather than the matter of allowability (as invoked for the other claim requests on file under Articles 54, 56 and 123(2) EPC).

T 1764/17 - Insufficient number of dependent claims

 Key points

• The Board makes some remarks about dependent claims as granted.
• The Board: “the proprietor's right to amend the patent is limited by Rule 80 EPC to overcoming opposition grounds, and is not an opportunity to fix shortcomings of the granted patent, such as an insufficient number of independent or dependent claims to define all commercially viable embodiments, or to improve fallback positions in future revocation proceedings before a national court.”
• The case is discussed in the forthcoming Case Law 2020 supplement of the O (link)

T 1764/17 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t171764eu1.html

4. Admissibility of auxiliary requests 20, 20A, 21, 21A, 22, 22A, 22B.

As already indicated by the Board in its communication, only in exceptional cases can the replacement of a granted single independent claim by two or more independent claims be considered to be occasioned by a ground for opposition. An exception might arise if two granted dependent claims were linked in parallel to a single independent claim. Then the filing of two independent claims including each one of the two parallel claim combinations might be possible, see Case Law of the Boards of Appeal, 9th edition 2019 (CLBA), IV.C.5.1.5.b), thus allowing separate fragments of the scope of protection afforded by the patent as granted to be retained. However, this exception does not apply to the addition of an independent claim directed at an aspect of the invention that was not included in the granted set of claims. As set out in CLBA, IV.C.5.1.1 the proprietor's right to amend the patent is limited by Rule 80 EPC to overcoming opposition grounds, and is not an opportunity to fix shortcomings of the granted patent, such as an insufficient number of independent or dependent claims to define all commercially viable embodiments, or to improve fallback positions in future revocation proceedings before a national court.

In the present case, at least one of the two independent claims of all auxiliary requests 20, 20A, 21, 21A, 22, 22A, 22B is directed at subject-matter that incorporates new features extracted from the description, that might moreover be material for the issue of patentability. These include a face seal portion having a face seal that is at least partially elastic, so that it can move with the user's jaw when the user talks. These independent claims are thus not straight combinations of granted claims and the above exception does not apply.

For the above reasons the Board considers that the filing of the two independent claims in these requests is not justified by a ground for opposition, contrary to Rule 80 EPC. The Board thus decided not to admit auxiliary requests 20, 20A, 21, 21A, 22, 22A, 22B.

T 3003/18 - Why the description must be adapted to the claims

Key points

• The EPO frequently requires that the description is amended to be consistent with the claims as granted or as amended in opposition. But why? E.g. the USPTO does not have such a requirement at all (and in fact, US clients may not always know beforehand how strictly this requirement is applied by the EPO).
• In this opposition appeal, the opponent “submitted that these amendments to the description of the patent as granted were not occasioned by a ground for opposition under Article 100 EPC, and that for this reason the amendments were contrary to Rule 80 EPC.”
• The Board: “compared with claim 1 as granted, present claim 1 has been amended to require that the fiber optic connector of the claimed fiber optic plug [is selected from three particular types of connectors], and that this amendment [of the claim] was occasioned by the grounds for opposition of lack of novelty and of inventive step raised under Article 100(a) EPC by the opponents during the proceedings.” The amendments of the description make the description consistent with the amended claim. 
• The Board: “Furthermore, according to Article 101 (3) EPC the amendments to the patent as granted shall meet the requirements of the EPC, and in particular the requirements of Article 84 EPC according to which the claims shall be supported by the description, together with the requirements of Rule 42 (1) (c) EPC according to which the description shall disclose the invention as claimed.” (emphasis added) 
• Rule 42(1)(c) prescribes that “the description shall ... disclose the invention, as claimed, in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood, and state any advantageous effects of the invention with reference to the background art”.
• Article 84, second sentence specifies that “[The claims] shall be clear and concise and be supported by the description.”. The EPO publication of the EPC does not crosslink Article 84 to Rule 42 or vice versa (link). It's the third requirement of Article 84, second sentence, that matters here ('shall be supported by the description'). 
• Article 101(3) specifies that the "the patent and the invention to which it relates meet the requirements of the [EPC]", not that the “the amendments to the patent as granted shall meet the requirements of the EPC”, but perhaps the present Board tries to reflect the holding of G3/14 that “the claims of the patent may be examined for compliance with the requirements of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC”
• Upon first reading, the prescriptive part of Rule 42(1)(c) may appear to be the ‘in such terms’ phrase, but the Board leaves out the comma and recognizes an independent requirement that “according to [Rule 42(1)(c)] the description shall disclose the invention as claimed.”
• The 'supported by the description' requirement should of course not be confused with Article 83 EPC or Article 123(2) EPC. 

EPO T 3003/18 -  link



4. Description - Rule 80 and Articles 123(2) and 76(1) EPC

4.1 Amended pages 3 and 4 of the description marked "18:12" correspond to pages 3 and 4 of the description of the patent specification amended as follows:

i) the expressions "according to an embodiment of this invention", "of this invention", and "according to one embodiment of this invention" in the passages in column [0012] and [0014] referring to Fig. 1, 2 and 9 have been deleted; and

ii) the passage in paragraph [0016] reading "[...] depending upon the type of fiber optic connector. Although the fiber optic plug may include a variety of fiber optic connectors including MTRJ connectors, SC-DC connectors, Unicam**TM connectors, SC connectors, LC connectors, and the like, the fiber optic plug 10 of the illustrated embodiment is shown to include an MTP connector by way of example, but not of limitation" has been amended to read "[...] depending upon the type of fiber optic connector, the fiber optic connectors being MTRJ connectors, SC connectors, or LC connectors. The fiber optic plug 10 of the illustrated embodiment is shown to include an MTP connector by way of example, but falling outside of the scope of the claimed invention."

T 2301/12 - Post 1 - Inadmissible or not allowable

Key points

• In this opposition appeal, the Board has firstly to decide (under Article 12(4) RPBA) on whether to admit requests withdrawn during the first instance proceedings. Patentee initially disputes that he had withdrawn the requests, but is bound by the (non-challenged) minutes that the new requests  (including new Main Request) "replaced" the initial requests during the oral proceedings before the OD, such that these initial requests were in fact withdrawn. The Board observes that "where a proprietor files multiple requests, there must be a single main request, and it must be apparent at every stage of the proceedings which request this is." 
• However, the OD had (before the withdrawal) indicated that the initial main request did not meet Article 123(2) EPC and was "therefore was not admitted into the proceedings". The Board explains that "The finding of the Opposition Division that the initial main request did not meet the requirements of Article 123(2) EPC should therefore have led to a decision that the patent could not be maintained according to this request. Failure to meet the requirements of Article 123(2) EPC does not - by itself - render a request inadmissible, and the decision not to admit the initial main request into the proceedings therefore required a separate legal basis." Accordingly, the decision to not admit the requests is "flawed" (the request should have been admitted and rejected). 
• The OD also misapplied Rule 80 for a further not admitted request. That request was not admitted, because the OD considered the claim cancelled therein to meet the requirements of Article 123(2) EPC. "This does not correspond to the Board's understanding of the functioning of Rule 80 EPC." "If an opponent objects to a request on the grounds that one or more dependent claims fail to meet the requirements of Article 123(2) EPC, the filing of an amended set of claims in which these claims are deleted is certainly "occasioned by a ground for opposition", and the requirements of Rule 80 EPC are met. For the purposes of applying Rule 80 EPC, whether subsequent examination confirms the opponent's objections under Article 123(2) EPC or not (a judgement which could, in any event, be overturned on appeal) is [irrelevant]"
• In these circumstance, the patentee is not bound by the withdrawal of the requests during the oral proceedings before the OD, and the request are admitted in appeal. 

EPO T 2301/12 - link

Reasons for the Decision

1. The appeal is admissible.

2. Admissibility of the main request

2.1 For convenience of reference, the main request and the seven auxiliary requests which were on file at the start of the oral proceedings before the Opposition Division will be referred to as the proprietor's "initial requests".

2.2 According to Article 12(4) RPBA the Board has the power to hold inadmissible requests which could have been presented, or which were not admitted, in the first instance proceedings.

2.3 The current main request is identical to the initial main request, which was not admitted into the proceedings. The opponent argues that, regardless of whether this decision of the Opposition Division was correct, the initial main request was subsequently withdrawn (as were all of the initial requests). It was therefore not presented for a decision by the Opposition Division, and the Board should use its discretion under Article 12(4) RPBA not to admit it into the proceedings at this stage. The proprietor denies that it was ever withdrawn. The first issue to decide is therefore whether the initial requests were in fact withdrawn.

2.4 The accuracy of the minutes of the oral proceedings has never been challenged, and the Board starts from the position that they represent a faithful account of events.

According to the minutes, the Opposition Division decided not to admit any of the initial requests, and the oral proceedings were interrupted "to allow the proprietor to prepare an admissible request". The proprietor subsequently "filed a new main request and auxiliary requests 1-3 ... to replace the [initial] main request and auxiliary requests 1-3 ... Auxiliary requests 4-7 ... were withdrawn" (page 2, third paragraph).

The use of the word "replace" clearly implies that the initial main request was no longer the current main request, and since there was no attempt to retain it as a new auxiliary request either, it is difficult to avoid the conclusion that it was simply withdrawn.

2.5 The new requests were annexed to the minutes and the first of them is clearly entitled "MAIN REQUEST". The Board does not accept the argument that the titles of requests should be considered mere labels for identification. Where a proprietor files multiple requests, there must be a single main request, and it must be apparent at every stage of the proceedings which request this is. One reason why this is essential is that where the main request is not allowed, the proprietor is adversely affected by the decision, and may appeal pursuant to Article 107 EPC, whereas this would not normally be the case if the main request is allowed.

The Board therefore takes the view that filing a new main request "to replace" the initial main request constitutes withdrawal of the initial main request.

2.6 The opponent points out correctly that cases exist in which the boards have used their discretion under Rule 12(4) RPBA to refuse to admit a request in appeal proceedings on the grounds that it had been withdrawn before the department of first instance. However, this remains a matter of discretion to be exercised on a case by case basis.

In the present case the communication annexed to the summons to oral proceedings included the provisional opinion of the Opposition Division that claims 21 and 22 of the granted patent failed to meet the requirements of Article 123(2) EPC and that the subject-matter of claim 1 was not new. In response, the proprietor filed new requests ("the initial requests") one month prior to the oral proceedings, thus respecting the time limit set by the Opposition Division pursuant to Rule 116 EPC. That the initial requests were an attempt to address the above objections has not been disputed.

It was therefore not unreasonable for the proprietor to assume that these requests would be the focus of the substantive discussions at the oral proceedings. In fact, the proprietor was confronted at oral proceedings by the decision of the Opposition Division not to admit any of the initial requests. While the opponent is correct in saying that the proprietor had options available other than withdrawing the initial requests, for example, filing new auxiliary requests, the Board accepts that the proprietor had been put into the uncomfortable position of having to decide - during the oral proceedings - how to react to an unexpected turn of events.

2.7 It is for this reason that the Board considers that the correctness - or otherwise - of the Opposition Division's decision is a factor to be considered in the present case. If the Opposition Division was justified in deciding not to admit the initial requests, then the predicament in which the proprietor found itself at oral proceedings was a result of the proprietor's own actions in filing inadmissible requests. If the decision of the Opposition Division was wrong, then the proprietor arguably should not be penalised for making an inappropriate choice, under pressure, in response to an incorrect decision of the Opposition Division.

2.8 In relation to the main request, the Opposition Division decided, according to the minutes of the oral proceedings, two things: firstly that the initial main request did not meet a requirement of the EPC (namely, Article 123(2) EPC), and secondly that it "therefore was not admitted into the proceedings".

2.9 According to Article 101(3)(a) EPC, if the Opposition Division is of the opinion that, taking into consideration the amendments made by the proprietor of the European patent during the opposition proceedings, the patent and the invention to which it relates meet the requirements of the EPC, it shall decide to maintain the patent as amended, provided that the conditions laid down in the Implementing Regulations are fulfilled.

Conversely, the consequence of an amended request being judged not to meet the requirements of the EPC is that the Opposition Division shall decide that the patent cannot be maintained according to this request. The finding of the Opposition Division that the initial main request did not meet the requirements of Article 123(2) EPC should therefore have led to a decision that the patent could not be maintained according to this request.

Failure to meet the requirements of Article 123(2) EPC does not - by itself - render a request inadmissible, and the decision not to admit the initial main request into the proceedings therefore required a separate legal basis. No such basis was cited, and in the present case it is not apparent to the Board which provision of the EPC could have been cited as grounds for refusing to admit the initial main request.

The decision not to admit the initial main request into the proceedings was therefore flawed, and the same applies to the initial first to third auxiliary requests, which were not admitted for the same reasons.

2.10 The fourth to seventh auxiliary requests were not admitted for failure to meet the requirements of Rule 80 EPC.

Both claim 21 and claim 22 of the granted patent had been attacked by the opponent for failure to meet the requirements of Article 123(2) EPC, and the Opposition Division provisionally agreed with this conclusion in the communication annexed to the summons to oral proceedings. In response, both claims were deleted from the initial fourth to seventh auxiliary requests.

Subsequently, at the oral proceedings, the Opposition Division came to the conclusion that claim 21 did not meet the requirements of Article 123(2) EPC, but that claim 22 did. As a result, the fourth to seventh auxiliary requests were not admitted, since "deletion of claim 22 was not occasioned by a ground for opposition" contrary to the requirements of Rule 80 EPC.

2.11 This does not correspond to the Board's understanding of the functioning of Rule 80 EPC. If an opponent objects to a request on the grounds that one or more dependent claims fail to meet the requirements of Article 123(2) EPC, the filing of an amended set of claims in which these claims are deleted is certainly "occasioned by a ground for opposition", and the requirements of Rule 80 EPC are met.

For the purposes of applying Rule 80 EPC, whether subsequent examination confirms the opponent's objections under Article 123(2) EPC or not (a judgement which could, in any event, be overturned on appeal) is neither here nor there.

2.12 The Board therefore concludes that for the initial main request, and for each of the initial first to seventh auxiliary requests, the decision not to admit these requests into the procedure was not justified according to the EPC.

2.13 The Board fully accepts that it is necessary to consider the interests of both parties, and that the argument that it is unfair on the opponent to readmit requests which were previously withdrawn has merit. However, in the opinion of the Board, this is outweighed in the present case by the unfairness of penalising the proprietor for withdrawing the main request in response to an incorrect decision of a department of the EPO.

2.14 The opponent also raised the objection that the amendment to claim 1 of the main request did not comply with the requirements of Rule 80 EPC. The Board does not agree. In the notice of opposition (point 7.2.2.3) the subject-matter of claim 1 was was alleged to lack novelty based on an argument that "on" in claim 1 did not necessarily imply "in contact with". This interpretation was provisionally endorsed by the Opposition Division (point 4.2 of the annex to the summons to oral proceedings). The amendment to "on and in contact with" is a clear response to this objection and therefore complies with Rule 80 EPC. For the purposes of applying Rule 80 EPC, it is immaterial whether the opponent's novelty argument was valid or not, or if valid, whether the proprietor's response actually succeeds in overcoming it.

2.15 The main request is therefore admitted into the proceedings.

[...]

3.6 The amendments to claims 21 and 22 are therefore found to contravene the requirements of Article 123(2) EPC, and consequently the patent cannot be maintained according to the main request according to Article 101(3)(a) EPC.

5. Admissibility of the 3rd auxiliary request

5.1 The third auxiliary request corresponds to the initial fourth auxiliary request. In the minutes of the oral proceedings it is explicitly stated that this request was "withdrawn". However, for the reasons given above in connection with the main request, this is not seen as a bar to admission into the proceedings in the present case. In addition, the Board has already given its reasons why this subject-matter is considered to comply with the requirements of Rule 80 EPC (see points 2.10 to 2.12, above).

5.2 The third auxiliary request is therefore admitted into the proceedings.

6. Third auxiliary request: Article 123(2) EPC

The Board has found that claim 1 of the main request meets the requirements of Article 123(2) EPC, but that claims 21 and 22 do not. The third auxiliary request corresponds to the main request, but with the said claims 21 and 22 deleted, and it therefore meets the requirements of Article 123(2) EPC.

T 2290/12 - Multiple independent claims in opposition

Key points

• If claim 1 as granted is considered to lack inventive step, Rule 80 is not prejudicial to filing auxiliary requests having multiple independent claims, each with different distinguishing features compared to claim 1 as granted.
• The Board reviews the case law regarding the difference between clarity and insufficiency of disclosure, and finds that meanwhile there is a broad consensus, or at least predominant opinion, that the question of whether the skilled person can determine whether a product falls in the scope of the claims, or not, is a matter of clarity and not of insufficient disclosure. 

EPO T 2290/12 - link

Entscheidungsgründe

3. Hauptantrag

3.1 Ausführbarkeit (Artikel 100 b) EPÜ 1973)

Die Beschwerdegegnerin hat in diesem Zusammenhang geltend gemacht, dass der Fachmann wissen muss, wann er im Schutzbereich der Ansprüche arbeitet und sich dabei auf die Entscheidungen T 464/05 bzw. T 256/87 berufen.

T 0750/11 - Rule 80 and restriction

Key points

• The Board indicates that any amendment restricting the independent claims complies with Rule 80 EPC. 

EPO T 0750/11 - link

2.3 Regel 80 EPÜ

2.3.1 Die Beschwerdeführerin rügte, dass die Änderung in Merkmal (b) des gemäß Anspruch 1 beanspruchten Verfahrens, nämlich die Destillation des Reaktionsstroms unter Erhalt eines an Pentennitrilen auf 5 bis 30 Gew.-% abgereicherten Stromes 3, nicht den Erfordernissen der Regel 80 EPÜ genüge. Ein an Pentennitrilen auf 5 bis 30 Gew.-% abgereicherter Strom werde nämlich bereits in Druckschrift (1) erreicht, mit der Folge, dass die von der Beschwerdegegnerin eingeführte Beschränkung keinen Einspruchsgrund beheben könne.

2.3.2 Indessen ist eine Änderung nach Regel 80 EPÜ dann formal zulässig, wenn sie als ernsthafter Versuch zu werten ist, einem Einspruchsgrund zu begegnen. Damit steht formal eine Änderung, die den Gegenstand eines unabhängigen Anspruches weiter einschränkt, als im Einklang mit Regel 80 EPÜ. Ob aber jede einschränkende Änderung tatsächlich einen angezogenen Einspruchsgrund behebt ist eine Frage die erst bei der materialrechtlichen Prüfung zu klären ist.