The Board of Appeal of the EPO has issued two decisions concerning appeal cases T 0123/22 and T 1191/22, which relate to the interpretation of Rule 80 EPC. The fundamental question at issue was whether an independent claim for maintaining the patent in a restricted form may be replaced by several independent claims, each defining different embodiments.
As a prerequisite, it must be noted that amendments to the claims pursuant to Rule 80 EPC must be induced by a ground for opposition under Article 100 EPC, wherein this ground for opposition need not have been invoked by the opponent. In the case of amended claims, it must therefore be clarified whether the patent proprietor has made a serious attempt and has a genuine interest in removing the ground for opposition by means of the amendment(s).
However, Rule 80 EPC does not specify what such amendments must or must not look like. According to Rule 80 EPC, it is therefore not excluded that an independent claim may be replaced by several independent claims and thereby be restricted. Nor is it excluded that the several independent claims refer to features from the description which were not previously disclosed in the granted claims.
In the view of the EPO Board of Appeal, the legitimate interest of the patent proprietor in maintaining their patent with the widest possible scope of protection is to be given priority.
In summary, it can be said that, according to the wording of Rule 80 EPC, ‘turn one into several’ is not excluded in the case of an independent claim under Rule 80 EPC.
