5.12.14 Reverting to broader claims, especially those as granted

Previously, the boards consistently ruled that a proprietor who has defended his patent to only a limited extent in opposition proceedings is not prohibited a priori (i.e. except in specific cases where the reformatio in peius prohibition applies or there has been abuse of procedure) from returning to a broader version of his patent, including the granted version, in subsequent appeal proceedings. Intervening limitations of the patent do not imply any express abandonment of parts of it but are to be regarded merely as attempts to word the patent so as to delimit it against objections (see inter alia T 123/85, OJ 1989, 336; T 296/87, OJ 1990, 195; T 331/89; T 900/94; T 699/00; T 880/01; T 794/02; T 934/02; T 1018/02; T 386/04; T 1276/05 and the more recent decisions in T 43/16, T 727/15).

However, since adoption of R. 116(2) EPC and Art. 12(4) and 13 RPBA 2007, the relevant legislation differs from that applicable at the time of the decision in T 123/85. Art. 12(4) RPBA 2007 provided that the boards may at their discretion disregard sets of claims which ought already to have been presented at first instance. This discretion also applies to sets of claims presented for the first time on appeal as a means of defending a broader version of the patent than that at issue in the opposition proceedings (T 28/10, T 36/12, T 467/13, T 1135/15. Art. 12(6), second sentence, RPBA 2020 takes up this aspect of Art. 12(4) RPBA 2007 and the established case law under this provision (see CA/3/19, explanatory notes to Art. 12(6) RPBA 2020; see also chapter V.A.4.3.7 on the case law under new Art. 12(6), second sentence, RPBA 2020).

Referring to T 28/10, the board stated in T 671/08 that there was no absolute right of the patent proprietor to revert in appeal to the patent as granted nor that he is in principle hindered from doing so. There will be cases, as the present case shows, in which the admission of such a request poses no additional work and other cases in which such a request may even constitute an abuse of the proceedings. It follows thus that if such a request is submitted in appeal the board has to exercise its discretion under Art. 12(4) RPBA 2007.

In T 1964/12 in view of the objections of lack of novelty and/or lack of an inventive step raised by the opponents, the patent proprietor had decided not to argue novelty and inventiveness of the process claims as granted and had, instead, intentionally limited their subject-matter. The board found that, by doing so, it had deliberately chosen not to obtain a decision from the opposition division on the process claims as granted. Allowing it to revert on appeal to the process claims as granted would go against the need for procedural economy. However, see also T 526/13, in which the board distinguished the case before it from the one at issue in T 1964/12.

In T 1282/05, on being summoned to oral proceedings the appellants had filed new requests, the independent claims in these requests being worded far more broadly than the matter previously claimed in the appeal proceedings and essentially constituting a return to the original claim 1. The board found that the amendments could not be regarded as a response to objections in the summons, nor had the appellants given any reasons for them. Moreover, the statement of grounds gave no indication that such a return towards the originally claimed matter was intended. Hence the appellants' actions constituted an infringement of Art. 12(2) RPBA 2007. Furthermore, comparable requests could have been submitted before the department of first instance. See also T 1420/06.

In T 2075/11 the patent as granted could clearly have been defended in the opposition proceedings but the appellant (patent proprietor) had instead chosen to limit it, which meant that no first-instance decision had been taken on the granted version (see also similar case T 933/04). The board did not regard the appellant as having abandoned the patent as granted but it was of the firm view that admitting the request for maintenance as granted at the appeal stage went against the principle of procedural economy. See also T 781/13, T 1067/08, T 2075/11.

In T 796/02, the board held that it amounted to an abuse of procedure to withdraw a request with broader claims in appeal proceedings in order to prevent the board from taking a negative decision on it, but then re-introduce those broader claims before the opposition division, after a remittal of the case for further prosecution on the basis of much more limited claims was obtained.

In T 1578/13 during the opposition proceedings, the appellant, instead of requesting that the opposition be rejected or defending the patent as granted, had merely requested that the patent be maintained in versions correcting an allegedly obvious mistake. The board considered that, at the latest on learning at the oral proceedings at first instance, that the opposition division was not minded to allow the requested correction, the appellant ought to have begun defending the patent as granted.

On the topic of "Reverting to broader claims", see also the case law on Art. 12(4) RPBA 2007 in chapter V.A.5.11.3i) "Resubmission of requests withdrawn at opposition stage". It should also be borne in mind in this context that, according to G 9/92 date: 1994-07-14 and G 4/93 (OJ 1994, 875), in opposition appeal proceedings the extent to which the patent proprietor is entitled to make amendments depends on whether the patent proprietor himself filed an admissible appeal or is merely the respondent (on this point, see chapter V.A.3.1. "Binding effect of requests – no reformatio in peius").