Facts

Innovative Sonic Corporation (ISC) owns a European Patent entitled “Method and apparatus for handling buffer status reporting in a wireless communication system” (the Patent).

Telefonaktiebolaget LM Ericsson opposed registration of the Patent and sought its revocation. The Opposition Division of the EPO rejected Ericsson’s request and the Patent was allowed to remain on the register in amended form based on claims request 2a submitted by ISC during the proceedings.

Both parties appealed the Opposition Division’s decision. Ericsson requested that the decision be set aside and that the Patent be revoked. ISC sought dismissal of Ericsson’s appeal, arguing that the Patent should remain based on claims request 2a or, in the alternative, as amended by claims requests 2b or 1c that it had submitted in response to a communication from the Board of Appeal.

Decision

The Board found that both claims requests 2a and 2b were not allowable as they amounted to added matter under Article 123(2) of the European Patent Convention (EPC).

As for claims request 1c, this had been filed in response to a communication from the Board and was therefore subject to the Rules of Procedure of the Boards of Appeal (RPBA) 2020. The main question was whether the filing constituted an “amendment” of ISC’s appeal case and whether the Board had any discretion to disregard it.

The single method claim of the 1c request was identical to request 1b, which had been pending during the opposition proceedings and had been maintained without further substantiation, apart from the deletion of several of the 1b claims.

The Board noted that there is currently divergence in the jurisprudence as to whether the deletion of claims amounts to an “amendment”. One strand of jurisprudence states that if the deletions do not change the “factual and legal framework of the case” or the “subject of the discussions” and do not lead to a “re-weighting of the subject of the proceedings”, they are not considered to be an “amendment”. In this case, however, the Board endorsed the other strand of jurisprudence, which holds that any deletion of claims from a previous set of claims amounts to an “amendment” of the appeal case meaning that the Board has discretion to disregard it. The Board reached this decision based on a systematic interpretation of the notion of “amendment”. It also said that, according to Article 12(2) of the RPBA 2020, an appeal case must simply be directed to the “requests, facts, objections, arguments and evidence on which the decision under appeal was based”, not based on the “factual and legal framework of the case”, the “subject of the discussions” or whether they lead to a “re-weighting of the subject of the proceedings”.

Therefore, the submission of claims request 1c constituted an “amendment” to ISC’s appeal case, meaning that Article 13(2) RPBA 2020 applied. Article 13(2) provides that amendments made to an appeal case after notification of a summons to oral proceedings shall not be taken into account unless there are exceptional circumstances, “justified with cogent reasons”.

The Board found that ISC had failed to address the late filing of claims request 1c and had failed to provide “cogent reasons” justifying the amendments it contained. In any event, the Board said, claims request 1c was not allowable as it constituted added matter under Article 123(2) EPC. Accordingly, claims request 1c was ruled inadmissible. The decision under appeal was therefore set aside and the Patent was revoked. (T 2360/17 Innovative Sonic Corporation v Telefonaktiebolaget LM Ericsson (EP:BA:2022:T2360/17) (7 July 2022) — to read the decision in full, click here).