2.4.4 Converging or diverging versions of claims

In T 2680/18 the board noted that in principle, the convergence of a plurality of requests may be taken into account when deciding on the admissibility of requests based on R. 137(3) EPC. What mattered was the 'convergence' or 'divergence' of the claim versions, i.e. whether they further developed the subject-matter of the independent claim of the main request by progressively limiting it in one direction or in the direction of one inventive idea, respectively, or whether they develop it along various directions by incorporating different features.

In T 1074/10 the board noted that the convergence criterion (i.e. whether the respective versions of the sets of claims converge or diverge) had been accepted and also applied by the boards of appeal themselves (see e.g. T 240/04, T 1685/07, T 1969/08). The board observed that R. 86(3) EPC 1973 (R. 137(3) EPC) left open entirely how the examining division should exercise its discretion and in particular, neither defined a convergence criterion nor a criterion based on prima facie compliance with the requirements of the EPC. The board was of the opinion that the "divergence" of a request from earlier requests in the sense that it changed substantially the issues at stake could be contrary to the EPO's interest in bringing the procedure to a close. Therefore, the board agreed with the cited case law and considered that divergence of a request was one factor amongst others which a deciding instance may consider when exercising its discretion under R. 86(3) EPC 1973. The decision of the examining division not to admit a request was therefore not wrong merely because this criterion was used.

In T 996/12 the board stated that, in general terms, the way in which the examining division should exercise its discretion to allow amendment of an application depended upon the circumstances of each individual case and on the stage of the pre-grant procedure which the application had reached. The board noted that the applicable Guidelines did not support the concept of converging claim sets being a requirement for allowing amendments or, conversely, a diverging claim set not being acceptable. The examining division referred to two board of appeal decisions, T 1685/07 and T 745/03, for this criterion. Apart from the fact that these decisions apply particularly to the situation where a patent proprietor submits a plurality of auxiliary requests in addition to a main request in opposition appeal proceedings, it needed to be stressed that its underlining justification was to be found in the efficiency of these appeal proceedings, the latter being of a judicial nature in contrast to the purely administrative character of the proceedings before, for instance the examining division or the opposition division. The board found that this fundamental distinction eo ipso made the unqualified application of this criterion by the department of first instance of the EPO questionable.