Recent decision T 0561/23 provides further support for replacing an independent claim with multiple independent claims in oppositions

In the case underlying the decision T 0561/23, the Opposition Division came to the conclusion that several auxiliary requests submitted during opposition proceedings are not complying with the requirements of Rule 80 EPC.

In particular, granted claim 1 in this case refers to a jalousie system. In response to the opponent attacking novelty of this claim, the patent proprietor submitted several auxiliary requests. For example, in auxiliary requests II and III, the patent proprietor added to granted claim 1 inter alia: "wherein at least one of the following features is satisfied: a) …, b) …, c) …, d)…". I.e., four alternatives a) to d) were added to granted claim 1. This can be seen as replacing claim 1 with four independent claims.  

Each of the features a) to d) is based on a granted independent claim. Furthermore, features a) to c) specify an electronic control of the jalousie system, whereas feature d) specifies the number of electronic connections of the jalousie system.

The Opposition Division denied the compliance of auxiliary requests II to VII with Rule 80 EPC by relying on decision T 1138/02. In this decision T 1138/02, the Board differentiated between "variants or alternatives" covered in claim 1 and contained in the granted claims on the one hand, and on "preferred embodiments" of claim 1 contained in the granted claims on the other hand. The latter is seen in T 1138/02 as not complying with Rule 80 EPC.

Referring to decision T 1138/02, the Board in the case at hand (T 0561/23) argued that the four alternatives a) to d) added to claim 1 do not refer to a common generic granted feature. This view is explained by the Board by stating that the first three alternatives a) to c) refer to an electronic control of the jalousie system, while the fourth alternative d) refers to the number of connections of the jalousie system which is not associated with the first three. As a result, auxiliary requests II to VII were not admitted to the opposition proceedings.

This decision was reviewed in appeal proceedings. During oral proceedings before the Board of Appeal, the proprietor submitted an auxiliary request XIb' in response the Board changing its preliminary view. The Board saw this as an appropriate reaction of the patent proprietor to the course of the proceedings and admitted auxiliary request XIb' according to Art. 13(2) RPBA.

Auxiliary request XIb' contains two alternative features a) and b) which correspond to features c) and d) of auxiliary request III. Hence, the alternatives a) and b) of auxiliary request XIb' are based on granted claims and – according to the Board in T 0561/23 – can be seen as two independent claims.  

The Board in T 0561/23 sees it as occasioned by the grounds of appeal to replace claim 1 with several independent claims which refer to different embodiments covered already in granted claim 1. In particular, the alternatives a) and b) of auxiliary request XIb' are based on granted claims 7 and 12 which are phrased in parallel to granted claim 1. In view of the Board, the situation at hand resembles the exception described in T 181/02 in which several independent claims are regarded as occasioned by the grounds of appeal. In addition, the Board decided that there are no reasons in the case at hand to urge the patent owner to select between several dependent claims phrased parallel to claim 1.

Interestingly, the Board in T 0561/23 emphasizes that the previous decision T 1138/02 consulted by the opposition division is a case-by-case decision which should not be followed.

Thus, the Board in T 0561/23 came to the conclusion that the amendments in auxiliary request XIb' are occasioned by the ground of appeal and comply with the requirements of Rule 80 EPC. Further, the matter was referred back to the opposition division.