EPO Oppositions - The importance of filing amendments early

Owners of European patents who choose to withhold claim amendments during European Patent Office (EPO) opposition proceedings are precluded from making those amendments during subsequent opposition appeal proceedings, according to a recent Technical Board of Appeal (TBA) decision (T23/10).

The primary function of the opposition appeal procedure is to give the losing party an opportunity to challenge the decision against it and to obtain a ‘judicial’ ruling on the correctness of the decision. It should not be an opportunity to conduct the opposition all over again. The issues to be dealt with on appeal are therefore determined by the dispute underlying the opposition.

This does not preclude the patent owner from making new requests for amendment to the patent during the appeal, but any such requests are only admitted at the discretion of the TBA.  All parties to an opposition should set out their case as fully as possible at the earliest opportunity for the sake of procedural efficiency and to protect the interests of third parties.

In the appeal at issue, the patent owner had been informed during the opposition procedure that his patent would be revoked because one of the claims introduced subject-matter which extended beyond the content of the application as filed, which is unallowable. The patent owner was given a final opportunity to amend the patent during the opposition hearing but chose not to do so.  The patent was therefore revoked without the need to consider all of the grounds of opposition that had been raised.

The patent owner filed an appeal against the decision to revoke the patent.  As part of the appeal, several requests for amendment to the patent claims were filed, and in which the offending claim had been deleted.

The opponent cried foul, arguing that the patent owner was deliberately prolonging the proceedings by having not deleted the offending claim during opposition.  In defence the patent owner said that it was its right not to be pushed into making amendments it did not want to, and argued that the time available during the opposition hearing itself was insufficient to evaluate fully the commercial interests associated with the offending claim.

Whilst the TBA agreed that the patent owner was indeed entitled to decide whether or not to request amendment of its patent, this must be weighed against the interests of third parties and the efficient conduct of the proceedings.  It was found that the patent owner had been warned that the offending claim would lead to revocation of the patent both prior to and during the opposition hearing, and had been given ample opportunity during that hearing to amend the patent. Deleting the offending claim would have been procedurally straightforward, and could easily have been done during the hearing.  Moreover, the TBA found that the patent owner could have deleted the offending claim during the opposition and still availed himself of the opportunity to request reinstatement of the claim during the appeal procedure. No exceptional circumstances were put forward by the patent owner to explain its conduct during the opposition. 

The TBA therefore declined to exercise its discretion to allow the new requests for amendment of the patent to be considered during the appeal procedure.  To have done so would have allowed the patent owner to act, on appeal, contrary to his actions before the opposition division, to the disadvantage of the other parties.

If the amendments had been admitted, the TBA would have been forced either to remit the case back to the opposition division for consideration of the outstanding issues, thus prolonging the proceedings, or else consider all the outstanding issues itself, which it said it cannot be expected to do.  It would also run contrary to the opponent’s reasonable expectation that only requests for amendment of the patent put forward at opposition could be advanced on appeal.

As an aside the TBA pointed out that the patent owner had failed to substantiate why the new claim amendments put forward on appeal should be allowable with regard to the requirements of the EPC concerning novelty, inventive step, etc. This alone may have been reason enough for the TBA not to admit the amendments.

This decision provides a warning to European patent owners that late requests for amendment that could and should have been made earlier during opposition proceedings may not be admitted during subsequent opposition appeal proceedings.  Accordingly, European patent owners should be mindful of negative opinions expressed by the opposition division.  It should be ensured that appropriate requests for amendment to address such opinions are timely filed, whilst safeguarding the opportunity to appeal more sought-after sets of claims as appropriate.

Richard Worthington
Advanced Engineering Group