Rule 80 EPC: Diverging case law when replacing claim 1 by multiple independent claims which are based on features from the description

Viki Joergens

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According to Rule 43(2) EPC, a European patent application shall not contain more than one independent claim in the same category unless one of three listed conditions are met. Rule 43(2) EPC refers explicitly to a European patent application and not a granted patent and cannot be applied straight forward in opposition proceedings.

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Further, it is established case law of the board of appeal that Rule 43(2) EPC is not applicable during opposition proceedings (e.g., T263/05, T 99/04, T 937/00) - similarly as it is seen as permissible to make amendments introducing non-unitary claims during opposition proceedings. The reason is that the patent proprietor is no longer able to file a divisional application and should not be forced in an unreasonable way to abandon potentially valid subject matter.

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However, claim amendments during opposition proceedings need to comply with Rule 80 EPC, i.e. claim amendments during opposition proceedings have to be necessitated by the grounds of opposition and being appropriate with respect to Rule?80 EPC.

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With respect to a set of claims filed in opposition proceedings containing multiple independent claims in the same category, the board of appeal affirms compliance with Rule 80 EPC in a growing number of cases. In particular, cases in which one independent claim as granted is replaced by multiple independent claims directed each to a specific embodiment covered by the granted independent claim are regarded by the board as admissible under Rule 80 EPC in many cases (e.g., T?223/97, T 937/00, T 428/12, T 181/02, T 937/00, T 1764/17). The reasoning of the board is that the patent proprietor should be allowed to maintain potentially valid subject matter already covered by claims as granted.

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Admissible are seen by the board in particular multiple independent claims which are based on a real restriction of the subject matter of a granted independent claim. For example, in T?223/97 the board confirms that the addition during opposition proceedings of one or more independent claims while maintaining the main claim in question could not be considered to be a restriction to the main claim in order to meet the ground for opposition raised against it. However, the replacement of one independent claim as granted by several, for example two, independent claims each directed to a respective specific embodiment covered by the independent claim as granted was seen as admissible if the replacement was occasioned by grounds for opposition.

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Section IV, C, 5.1.2 c) ii) of the Case Law of the Boards of Appeal (10th edition, 2022) deals with amendments occasioned by a ground for opposition under Rule?80?EPC and, in particular, with the filing of new independent claims. In this section, two decisions are cited, T 2063/15 and T 1764/17 in which the admissibility of multiple independent claims in the same category in oppositions proceedings appears to be denied due to the fact that the amendments included added features not only from granted dependent claims but also from the description. Reading Section IV, C, 5.1.2 c) ii) of the Case Law Book, the impression might arise that while amending a single independent claim based on features from the description in opposition proceedings is allowable, a different standard is applied when it comes to multiple independent claims in opposition proceedings.?

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For example, in the case underlying the decision T 2063/15 cited in said Section of the case Law Book each of a second and a third auxiliary request field by the patent proprietor contains two independent claims. Claim 1 of the second auxiliary request is a combination of granted claim 1 and granted claim 2. Claim 2 of the second auxiliary request is a combination of granted claim 1 and granted claim 9. Further, claim 1 of the third auxiliary request is a combination of granted claim 1, granted claim 2 and a feature from the description. Claim 2 of the third auxiliary request is identical to claim 2 of the second auxiliary request.

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The board regards the second auxiliary request and claim 2 of the third auxiliary request in T 2063/15 as complying with Rule 80 EPC: "With the subject-matter of claim 1 as granted having been found not to be novel, one or more independent claims based on a combination of claim 1 as granted with features of granted claims dependent upon claim 1 could be understood to be occasioned by the ground for opposition under Art. 100(a) EPC" (item 4.1.2 of the reasons in T 2063/15). However, the board regards claim 1 of the third auxiliary request in T 2063/15 (item 4.1.2 of the reasons) as not complying with Rule?80 EPC: "However, the inclusion of the additional independent claim 1 [in the third auxiliary request] based on claims 1 and 2 as granted in combination with features taken from the description, was no longer simply occasioned by a ground for opposition, since this ground was already addressed through the filing of independent claim 2; the additional independent claim 1 furthermore introduced claimed subject-matter which had no counterpart in the claims of the granted patent."

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The reasoning of the board in T 2063/15 for not admitting claim 1 of the third auxiliary request surprises since it seems that the very same argumentation would apply to the second auxiliary request. Also in the second auxiliary request, filing independent claim 2 already addressed the ground of opposition, still independent claim 1 is seen as also occasioned by the ground of opposition.?

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The board refers in T 2063/15 (item 4.1.3 of the reasons) to the "general principle enunciated by the Enlarged Board of Appeal in G 1/84, that 'opposition procedure is not designed to be, and is not to be misused as, an extension of examination procedure". However, it does not become clear from the reasons in T 2063/15 how exactly the patent proprietor in the case underlying T?2063/15 may have misused the opposition procedure as an extension of examination procedure.

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Moreover, the board in T 2063/15 (item 4.1.3 of the reasons) references to the decision T 223/97 by stating that "the Board in decision T 223/97 (...) con?rmed that the addition, during opposition proceedings, of one or more independent claims cannot be admitted since it cannot in?uence the fate of the originally contested independent claim as it cannot be considered as a restriction of its wording in answer to the invoked opposition ground". However, the decision T 223/97 does not appear to support the finding of the board in T 2063/15. In fact, in T 223/97 multiple independent claims in which the subject matter of a granted claim is restricted are seen as complying with Rule?80 EPC as long as the granted claim itself is deleted. Only if the granted claim is also maintained, a compliance with Rule 80 EPC is denied in T 223/97. Since in the case underlying T 2063/15 the claims of the third auxiliary request are based on real restrictions of granted claim 1, it is not clear how the reasoning in T 223/97 can be applied to the case in T 2063/15 such that this results in claim 1 of the third auxiliary request in T 2063/15 being found to not comply with Rule 80 EPC.

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The other decision cited in said Section IV, C, 5.1.2 c) ii) of the Case Law Book in which the admissibility of multiple independent claims in the same category in oppositions proceedings appears to be denied due to the fact that the amendments included features from the description is T 1764/17. In T 1764/17, the board emphasized that the replacement of a granted single independent claim by two or more independent claims could only in exceptional cases be considered to be occasioned by a ground for opposition. Such an exceptional case is seen by the board in the filing of two independent claims including each one of two parallel combinations of granted claims. However, cases in which one or more of the multiple independent claims are not straight combinations of granted claims but include features extracted from the description are seen by the board in T 1764/17 as violating Rule 80 EPC.

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Having a closer look to the case underlying the decision in T 1764/17, shows that here a granted independent claim (claim 1 of the main request) was amended by including several features from the description. The result was that roughly half of the words of the new independent claim (e.g., claim 1 of auxiliary request?20) was taken from the description. One can only speculate if the board considered the new independent claim in this case in light of the amount of amendments from the description as essentially newly drafted based on the description. Still the question remains why amendments based on the description form no fundamental obstacle in the case of a single independent claim but should form a fundamental obstacle in the case of multiple independent claims. A further question is, if the reasoning in T 1764/17 can and should be applied to cases were features from the description are merely used to further develop, e.g., clarify, a subject matter already present in the granted independent claim.

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Indeed decisions of the board of appeal exist in which multiple independent claims were seen as occasioned by the grounds of opposition even when these claims contained features from the description. For example, in T 0605/11, the patent owner filed an auxiliary request in which claim 1 was a combination of granted claim?1 and a feature extracted from the description. In particular, the feature "methyl" was added to the feature of granted claim 1 of "fatty acid ester" resulting in "fatty acid methyl ester". Therein, the word "methyl" was not part of any granted claim but was taken from the description. Furthermore, a claim 20 of the same auxiliary request was a combination of granted claims 1 and 15. The presented reasoning in T?0605/11 (item 4.4 of the reasons) is: "The Board notes further that each of the two different kinds of amendment identified by the Appellant, results in amended independent claims whose subject-matter is restricted compared to that of the corresponding independent process or use claims as granted. Hence, the two kinds of amendment made, being both substantial restrictions of the claimed subject-matter, can both be considered as being occasioned by, and as being an appropriate response to, a ground for opposition under Article 100(a) EPC."

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Hence, the crucial aspect in T 0605/11 for amendments being occasioned by the grounds of opposition according to Rule 80 EPC appears to be that the claim amendments of the multiple independent claims are real restrictions of the subject matter of the granted independent claim. The question whether or not the claim amendments are based on features from granted claims or from the original description does not seem to play a role in the decision T 0605/11.?

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To summarize, there appears to be more and more case law saying that multiple independent claims in the same category in opposition proceedings comply with Rule 80 EPC when (1) a granted claim covers multiple different embodiments, (2) the granted claim is attacked in the grounds of opposition, (3) each of the multiple independent claims replacing the granted claim is solely based on the granted claim and one or more dependent claims and (4) the granted claim is deleted.

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On the other hand, with respect to taking features from the description, there appears to be not yet a clear pattern in the boards' decisions. Given that amending a single independent claim in opposition proceedings by adding features extracted from the description is per se – without doubt – not an obstacle for the amendment being occasioned by the grounds of opposition, it appears that the same should apply when filing a set of amended claims containing multiple independent claims in the same category.