T 2019/18 () of 20.1.2023

Summary of Facts and Submissions

I. The appeal is against the examining division's decision refusing European patent application No. 13704647.0, published as international patent application WO 2013/109901 A1.

II. The decision under appeal was based on the following grounds.

- Claim 1 of the main request and of the auxiliary request contained subject-matter extending beyond the content of the application as filed, contrary to Article 123(2) EPC.

- Claim 1 of the main request and of the auxiliary request did not meet the requirement of clarity under Article 84 EPC.

III. The applicant (hereinafter: "appellant") filed notice of appeal. With the statement of grounds of appeal, it filed amended claims according to a sole request, replacing the sets of claims of the main request and the auxiliary request on which the decision under appeal was based.

The appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the claims of the sole request filed with the statement of grounds of appeal. As a precaution, it also requested oral proceedings. The appellant indicated a basis for the claims in the application as filed and provided arguments as to why the claims met the requirements of Articles 54, 56, 84 and 123(2) EPC.

IV. The board issued a summons to oral proceedings and a communication under Article 15(1) RPBA 2020. In this communication, the board gave the following preliminary opinion.

a) The claims of the sole request should have been presented before the department of first instance.

b) The board was inclined to exercise its discretionary power under Article 12(4) RPBA 2007 to hold the sole request inadmissible.

V. By letter dated 2 January 2023, the appellant withdrew its request for oral proceedings and requested a decision on the basis of the file as it stood. The board then cancelled the oral proceedings.

Reasons for the Decision

1. The appeal is admissible.

Sole request - discretionary power under Article 12(4) RPBA 2007

2. In the case in hand, the statement of grounds of appeal was filed before the date on which the revised version of the Rules of Procedure of the Boards of Appeal (RPBA 2020) entered into force, i.e. 1 January 2020 (see OJ EPO 2019, A63). Thus, in accordance with Article 25(2) RPBA 2020, Article 12(4) to (6) RPBA 2020 does not apply to the question of whether to admit the sole request. Instead, Article 12(4) of the Rules of Procedure of the Boards of Appeal in the 2007 version (RPBA 2007 - see OJ EPO 2007, 536) continues to apply.

3. Under Article 12(4) RPBA 2007, the board has the discretionary power to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first-instance proceedings. Since, in fact, almost every claim request could have been presented before the department of first instance, the question within that context is whether the situation was such that this request should already have been filed at that stage (see Case Law of the Boards of Appeal of the European Patent Office, 10th edition 2022, "Case Law", V.A.5.11.1 and V.A.5.11.4a)). The board exercises its discretion under Article 12(4) RPBA 2007 having regard to the particular circumstances of the individual case (see e.g. decision T 1178/08, point 2.3 of the Reasons). However, as was held in G 10/93 (OJ EPO 1995, 172, point 4 of the Reasons), "[p]roceedings before the boards of appeal in ex-parte cases are primarily concerned with examining the contested decision". Appeal proceedings are not a continuation of examination at first instance or a second, parallel procedure for the substantive examination otherwise to be carried out by the examining division which applicants could freely opt to launch depending on the circumstances (see Case Law, V.A.5.11.4a), in particular the cited decisions T 1108/10 and T 1212/08).

4. According to the appellant, the independent claims of the sole request are based on the independent claims of the auxiliary request on which the decision under appeal was based and from which they differ on account of the following amendments:

Claim 1:

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Claim 2:

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Claim 5:

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Claim 6:

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5. According to the appellant, these claims add features taken from paragraphs 29, 51, 52, 53 and 58 of the description of the application as filed (see statement of grounds, section "1. Amendments").

6. The appellant has not provided any explanation as to why it did not present the claims of the current sole request before the department of first instance.

7. In the months preceding the examining division's decision, the following procedural steps were taken.

- In a communication dated 10 May 2017 annexed to the summons to oral proceedings scheduled for 26 February 2018, the examining division held that the independent claims of the sole request then on file lacked clarity (Article 84 EPC) and that, as far as they could be understood, their subject-matter did not involve an inventive step (Article 56 EPC).

- With a letter dated 26 January 2018, the applicant filed amended claims according to a new main request and an auxiliary request (the main request and the auxiliary request on which the decision under appeal was based).

- By letter dated 30 January 2018, the applicant informed the examining division that it would not be attending the oral proceedings.

- The oral proceedings were held on 26 February 2018 in the absence of the applicant.

- On 19 March 2018, the examining division's decision was despatched. The grounds for the decision were that the subject-matter of claim 1 of the main request and of the auxiliary request did not meet the requirements of either Article 123(2) EPC or Article 84 EPC.

8. The board is of the view that in filing amended claims one month before the date of oral proceedings and not attending the oral proceedings, the appellant should have anticipated that the examining division might raise objections under Articles 123(2) and 84 EPC against the amended claims during the oral proceedings and that the application might be refused on that basis. By not attending the oral proceedings, the appellant forewent the opportunity to put forward new arguments or file amended claims during the oral proceedings in response to these objections. In the board's opinion, the appellant should therefore have filed the sole request in hand before the oral proceedings, if only as a further auxiliary request, as a precaution in case its written arguments did not convince the examining division.

9. Moreover, the board notes that the additional features introduced into the independent claims with the statement of grounds of appeal (see point 4 above) were not present in any of the claims on which the decision under appeal was based. As a consequence, the subject-matter of the independent claims of the sole request was never examined by the examining division and, most likely, was not even subject to a search.

10. If the board were to admit the sole request into the appeal proceedings, it would thus have to examine and decide on these amended claims for the first time on appeal, or remit the case to the department of first instance for further prosecution. Neither procedural option is appropriate. These two inappropriate options would never have arisen had these amended claims been presented during the proceedings before the examining division. The appellant should have had the examining division exhaustively assess and then decide on all subject-matter for which it intended to seek protection, even if only on a subsidiary basis, if it wished the board to rule on it.

11. For the above reasons, the board exercises its discretionary power under Article 12(4) RPBA 2007 to hold the sole request inadmissible.

Result

12. Since there is no admissible request on file, the appeal must be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.