B&B Partners obtain patentee-friendly decisions from the Boards of Appeal of the European Patent Office

Rule 80 EPC – Multiple independent claims for defending a patent in opposition proceedings

Within a short period of time, the Boards of Appeal of the European Patent Office have issued two parallel decisions that were obtained by partners of BOEHMERT & BOEHMERT in favour of our clients. Both decisions were published on 14 October 2024 and in both cases the interesting legal question is whether R. 80 EPC precludes the limited defence of a European patent in opposition proceedings with a set of claims that, instead of an independent claim of the granted patent, contains several independent claims that constitute different limitations of the independent claim of the granted patent.

Appeal T0123/22 – several independent claims limited by different features from the description

In the appeal case T0123/22, patent attorney Dr. Daniel Herrmann succeeded in setting aside the first-instance decision of the Opposition Division, according to which European Patent EP 2822613 B1 was revoked on the basis of R. 80 EPC. The Opposition Division had wrongly assumed that R. 80 EPC precluded a defence of the patent in a limited version by replacing an independent claim of the granted version with several independent claims, each containing different features from the description for the purpose of limitation. This decision was set aside by the Board of Appeal in a decision containing a catchword and remitted to the Opposition Division.

The Board of Appeal first clarified that R. 80 EPC is a purely substantive norm concerning the allowability of an amendment in opposition proceedings. According to the Board, the only relevant factor in assessing the requirement of R. 80 EPC is whether the amendment made is occasioned by a ground for opposition. In this regard, it was necessary to examine whether the amendment should be considered a genuine attempt to address a ground for opposition. In doing so, the board referred to the cited decision T0750/11. The circumstances of the individual case had to be taken into account. In the headnote and reasons, the board emphasised that R. 80 EPC does not provide any general guidelines as to how a patent proprietor may amend claims and, in particular, that it is irrelevant for R. 80 EPC whether the features additionally included in an attacked claim originate from dependent claims or from the description. In the present case, all three independent claims had been limited in relation to the opposed and not further pursued independent claim of the granted version and therefore apparently served to overcome the ground for opposition in the respective claim – and thus also overall. Therefore, R.80 EPC was fulfilled in the present case. According to the board, it is generally legitimate to cover several sub-areas at the same time that, in the opinion of the patent proprietor, are not affected by the ground for opposition. The purpose of R 80 EPC is not to prevent the patent proprietor from maintaining the patent as broadly as possible, taking into account the grounds for opposition.

Appeal case T1191/22 – several independent claims limited by different dependent claims

In the case T1191/22, patent attorney Felix Hermann succeeds in having the first-instance decision set aside, which had rejected an auxiliary request as contrary to R. 80 EPC because, in addition to an amended claim 1, it included further independent claims 12 to 15 based on granted dependent claims.

In line with decision T0123/22, the board corrected the opposition division’s decision by stating that R. 80 EPC is a substantive rule and not a procedural one. Referring to the earlier decision T0937/00, the board ruled that defending the patent with several parallel independent claims is in principle admissible and does not violate R. 80 EPC if the formulation of new independent claims in the opposition proceedings is aimed at overcoming asserted grounds for opposition.

Furthermore, the board stated that procedural aspects of allowability such as the lack of convergence of the independent claims or the effect of the auxiliary request on procedural economy are not relevant for the assessment of allowability under R. 80 EPC. The Board of Appeal decides to set aside the decision of the Opposition Division and to maintain the patent on the basis of the auxiliary request not admitted at first instance.

Extended scope of action for patent proprietors

The two decisions T0123/22 and T1191/22 both emphasise the substantive aspect of R. 80 EPC and distinguish it from procedural issues concerning the admissibility of a request. Both decisions, which were issued by two different boards of appeal, also confirm the principle that R. 80 EPC does not preclude a replacement of an independent claim of a granted patent with several amended independent claims in order to defend the patent in limited form, as long as the amendments can be considered a serious attempt to overcome the asserted grounds for opposition. This basically recognises the right of patent proprietors under R. 80 EPC to cover several sub-areas of the original subject-matter at the same time, i.e. in one and the same request, which from the point of view of the patent proprietors are not affected by the grounds for opposition asserted in the opposition proceedings.