T 2174/16 (ABRASIVE PARTICLES FOR POLISHING/ W.R. Grace & CO) 04-05-2021

1. The appeal is admissible.

Amendments

2. According to the Appellant, claim 1 of the main and the first auxiliary request did not meet the requirements of Article 123(3) EPC.

The Respondent submitted that claim 1 of the main and first auxiliary request did not extend the scope of protection conferred by the patent as granted, since claim 3 of the patent as granted covered a lower span value, by volume, greater or equal to 15 nm, such that the scope of claim 1 of the main and first auxiliary requests was not broader than that of the granted claims as a whole.

3. Claim 3 of the patent as granted is dependent on claim 1, since it is worded as "An abrasive composition according to claim 1, wherein ...". Hence, claim 1 must be construed to incorporate all the limitations of claim 1, including the lower limit of the span value of 20 nm. Thus, the scope of protection afforded by granted dependent claim 3 cannot be greater than that provided by granted claim 1.

Since the lower limit of the span value in claim 1 of the main and first auxiliary requests is lower than that in granted independent claim 1, and its dependent claims, namely 15 nm instead of about 20 nm, the scope of protection which would be conferred by claim 1 of the main and first auxiliary requests is broader than the scope of protection conferred by the claims as granted, such that the requirements of Article 123(3) EPC are not satisfied (also see T1702/12; point 4 of the reasons).

4. The Respondent argued that claim 3 as granted should be read as an independent claim since this claim comprised all the technical features to define the abrasive compositions. There was an inconsistency between the span value in granted independent claim 1 and dependent claim 3 of the patent as granted, since dependent claim 3 specified a lower limit for the span value of 15 nm, which was lower than the lower limit of 20 nm specified in claim 1 as granted. Claims are to be read by the technical understanding of the skilled person, and not by a lawyer. It was therefore clear that claim 3 was broader than claim 1 in this respect.

The Board disagrees. It is that there is an inconsistency between claim 1 and claim 3 since the range indicated in dependent claim 3 is larger than the range defined by independent claim 1. However, this inconsistency does not create an irresolvable contradiction between claim 1 and 3, and the skilled person will have no problem establishing that a feature of claim 3 may be redundant when read together with a feature of claim 1. In addition, even if the skilled person would consider that this inconsistency is the result of an error in the claims it cannot be concluded whether the lower limit of 20 nm specified in claim 1 or the lower limit of 15 nm in claim 3 and/or even the dependency of claim 3 to claim 1 was/were wrong.

The Board points out that establishing the scope of protection is a question of law. Indeed, scope of protection is an issue which is typically decided by a judge in infringement proceedings. Thus the claims are not only to be read with the understanding of the technically skilled person, but also by the lawyer, and their scope has to be established accordingly. The overall purpose of the provisions of Article 123(3) EPC is primarily a legal purpose, namely legal certainty for third parties that they will not be confronted with broader claims after amendments made in opposition. Therefore the principle of legal certainty which is of upmost importance with regard to scope of protection conferred by the patent as granted must be taken into account and the general principle that a claim drafted as dependent claim contains all the features of the independent claim to which it refers must normally apply, as far as possible with a reasonable claim interpretation.

5. The Respondent argued that it must be concluded that the construction of the claim's dependency was formally wrong from a purely legal standpoint rather than concluding that a claim formally drafted by a dependent claim is "by law" narrower in scope than the independent claim. The Respondent referred to decision T 1444/13 to corroborate its argument.

However, it is noted that the factual situation in decision T 1444/13 was in fact different from that of the case at hand. In that case claim 1 of auxiliary request 1 arose from the introduction of the feature required by dependent claim 2 to independent claim 1 of the patent as granted, without deleting or amending any features of claim 1 as granted. The deciding Board concluded therefore that the scope of independent claim 1 of auxiliary request 1 was identical to that of claim 2 of the patent as granted (see Reasons, point 3.3), because the independent claim 1 of the auxiliary request included all features of granted claim 2, when this latter was imagined as written out in full, including also the features of independent claim 1. This is why the deciding Board found that the amended claim did not contravene the requirements of Article 123(3) EPC.

The Board accepts that the findings in Reasons, point 3.4 of this decision suggests that there may be situations where a dependent claim must be considered to have a broader scope than the independent claim to which it refers, irrespective of the dependency. However, the deciding Board in that case did not give examples how such a situation may arise. Otherwise the deciding Board also considered that a dependent claim normally includes all the features of the independent claim to which it refers (see point 3.3). This Board holds that the situation of a broader dependent claim does not apply in the present case. As stated above in point 4., the Board does not interpret Claim 3 as granted as being broader than Claim 1 as granted.

The argument of the Respondent is therefore rejected.

Referral to the Enlarged Board of Appeal

6. The Respondent requested that a question be referred to the Enlarged Board of Appeal (see point VI. above). The Respondent based its request for referral on the fact that the conclusion that claim 1 of the main and auxiliary request 1 contravenes Article 123(3) EPC would be in contradiction with the approach adopted in decision T 1444/13 and thus prejudicial to an uniform application of the law.

In accordance with Article 112(1)(a) EPC 1973, a referral should only be made when a board considers that a decision of the Enlarged Board of Appeal is required for ensuring uniform application of the law or when a question of fundamental importance arises.

The Board has explained in detail why it considers in the present case that the dependent claim 3 comprises all the technical features of the independent claim 1 on which it depends (see point 4 above). Thus the Board can decide the case on its own. Moreover, as explained in point 5. above, the Board considers that the present case is in no direct contradiction with the findings of decision T 1444/13. The Board is also not aware that the approach of T 1444/13 have been followed by other decisions.

For these reasons the board does not see any necessity to refer the Respondents' questions to the Enlarged Board of Appeal.

Second and third auxiliary requests - admittance (Article 13(2) RPBA 2020)

7. The Respondent (patent proprietor) submitted that these auxiliary requests had been filed in response to the Board's communication under Article 15(1) RPBA 2020 dated 13 May 2020 indicating that according to its preliminary view, claim 1 of the main and first auxiliary request infringed the requirements of Article 123(3) EPC.

The summons to oral proceedings was notified on 8 May 2020. Thus, in accordance with Article 25(1) and (3) RPBA 2020, Article 13(2) RPBA 2020 applies to any amendment to the Respondent's appeal case made after notification of the summons. The second and third auxiliary requests were filed by letter dated 31 March 2021, i.e. after the notification of the summons to oral proceedings.

Therefore, Article 13(2) RPBA 2020 applies with respect to the question of whether these requests should be admitted into the appeal proceedings.

8. The Respondent argued that according to Article 25(2) RPBA, the provision of Articles 12 and 13 RPBA 2007 still applied to these submissions.

However, pursuant to Article 25(2) RPBA 2020 Article 12(4) RPBA 2007 continues to apply to the grounds of appeal filed before the entry into force of RPBA 2020 as well as to any reply to it filed in due time. These transitional provisions do not include further submissions which are filed after the expiry of the due date for filing a response. Rather, the provisions of the RPBA 2020 concerning amendments to a party's appeal case apply.

9. The Appellant requested that the second and third auxiliary requests be not admitted into the appeal proceedings pursuant to Article 13(2) RPBA 2020.

According to Article 13(2) RPBA 2020, any amendment to a party's appeal case made after notification of a summons to oral proceedings should, in principle, not be taken into account unless there were exceptional circumstances, which had been justified with cogent reasons by the party concerned, i.e. in the present case, by the Respondent.

The Board fails to find in the present case exceptional circumstances as required by Article 13(2) RPBA 2020.

These requests were filed in order to overcome an objection that had already been raised by the Appellant during the opposition proceedings and in the statement setting out the grounds of appeal. In its preliminary opinion, the Board merely concurred with the Appellant's arguments set out in the statement of the ground of appeal. Therefore, the Board considers that its preliminary opinion on the issue of Article 123(3) EPC could not have been surprising for the Respondent, and does not constitute any exceptional circumstance justifying the late filing of further requests.

10. The Respondent argued that the amended claims of auxiliary requests 2 and 3 should be admitted in the proceedings since the provisional opinion of the Board differed from the finding of the Opposition Division on the issue of Article 123(3) EPC. It was not necessary for the Respondent to file the second and third auxiliary requests before the Board issued its negative opinion on the preceding requests. Furthermore, these new auxiliary requests clearly solved the issue of Article 123(3) EPC in question without adding any new issues.

The issue of Article 123(3) EPC was already discussed at the first-instance proceedings and had been reiterated by the Appellant in the statement of grounds of appeal. The Respondent had therefore to expect that the Board might express a provisional opinion that would be different from the opinion of the Opposition Division. Moreover, this preliminary opinion from the Board on the issue of Article 123(3) EPC was solely based on objections raised in the statement of the grounds of appeal. The Respondent therefore could and should have formulated the second and third auxiliary requests in reply thereto, in a timely manner, before the Board had given its preliminary opinion. This was already so stipulated by Article 12(2) RPBA 2007: "... the reply [to the appeal] ... shall contain a party's complete case". The Respondent already had sufficient time before the summons to oral proceedings, to file auxiliary requests as a precautionary measure in view of the existing objections. This Respondent's argument is therefore rejected.

11. According to the Respondent, the special circumstance was also the change of the RPBA itself, since the amendment of the RPBA could not have been foreseen at the time when the appeal was filed. It could also not have been expected to prepare new submissions by 31 December 2019 merely because new rules entered into force.

However, the entry into force on 1 January 2020 of the new RPBA cannot justify the existence of exceptional circumstances within the meaning of Article 13(2) of this new RPBA. According to Article 25(1) RPBA 2020, the RPBA 2020 apply, as a general rule, to any appeal pending on the date of entry into force. This principle of immediate application is only subject to the two exceptions provided in Article 25(2) and (3) RPBA 2020, which does not cover the circumstances surrounding the present case.

Assuming, for the sake of argument, that the transitional provisions of Articles 25(2) and (3) RPBA 2020 do not provide an adequate framework for the late submissions in cases as the present one, i.e. where the Board's communication was already issued under the new rules, the Board still has to establish that the filing of the auxiliary requests 2 and 3 should have been made earlier even under the previously applicable rules. Thus the argument that the respondent had no reason to take action before 31 December 2019 is not convincing.

Aspects of procedural economy as well as the fact that these auxiliary requests solve the issue of Article 123(3) EPC without creating other issues is irrelevant against this background.

Hence, the Board concludes that there are no exceptional circumstances justifying the admission of the second and third auxiliary requests in the appeal proceedings at this late stage. Consequently, the second and third auxiliary requests are not admitted to the proceedings (Article 13(2) RPBA 2020).

Right to be heard (Article 113(1) EPC)

12. The Respondent submitted that its right to be heard would not be respected if the Board did not admit auxiliary requests 2 and 3 in the proceedings.

However, the Respondent expressed itself extensively on the admittance of these requests in the proceedings. Thus the party was heard on the question of the admission. As these request were not admitted, it is unnecessary to discuss them on the merit. It is inherent in any non-admitted request that a party may not have the opportunity to be heard on all aspects of such a request.

The Board concludes therefore, that the Respondent's right to be heard under Article 113(1) EPC has been respected, and dismisses the objection under Rule 106 EPC.