T 0166/86 (Separate sets of claims) of 25.9.1986

Summary of Facts and Submissions

I. In the proceedings in respect of European patent application No. 82 10 99 66.0, filed on 28 October 1982, advance notice of the communication under Rule 51(4) EPC was issued, following two examiner's letter and two discussions, on 23 October 1984, whereupon the applicants advised that the designation of Luxembourg should be deleted.

II. On 17 January 1985 the applicants were sent the communication in accordance with Rule 51(4) and (5) EPC, notifying them that the Examining Division intended to grant a European patent on the basis of the documents specified.

III. In their letter dated 28 January 1985, the applicants declared that they did not agree to the patent's being granted on the basis of the text as notified since a separate set of claims for the Contracting State of Austria should be included. The wording of the claims for the other Contracting States was not being amended.

IV. Of the claims notified in the communication under Rule 51(4) EPC ten relate to "no-mix" adhesive systems, five are for the manufacturing process and one relates to use.

V. The set of claims submitted for Austria likewise comprises 16 claims and differs from the set notified in accordance with Rule 51(4) EPC only in that the substance-directed claims have been made process claims. Otherwise they are worded identically.

VI. With their letter of 15 April 1985, the applicants submitted translations of the patent claims into English and French and paid the grant and printing fees.

VII. In their communication of 26 April 1985, the Examining Division advised that the claims for Austria had been filed too late and that the application of 28 January 1985 should therefore be withdrawn.

VIII. In order to obtain a decision which was open to appeal, the applicants wrote on 5 October 1985 asking the Examining Division to recognise Claims 1 - 16 for Austria, submitted by letter of 28 January 1985, as having been filed in time.

IX. By decision of 14 February 1986 the Examining Division rejected the European patent application, the reasons given being that, in exercising its discretion in accordance with Rule 86(3) EPC, it deemed inadmissible all petitions submitted after issue of the Rule 51(4) communication and which would have led to resumption of the substantive examination. Since in their submission of 5 October 1985 the applicants had withdrawn the application for grant of the patent on the basis of the documents specified in the communication pursuant to Rule 51(4) EPC, the application could only be rejected.

X. It is against this decision that the appeal of 11 April 1986 was directed. The grounds put forward by the applicants were that, to their knowledge, it had hitherto been possible to submit an amended set of claims for Austria even after the communication referred to in Rule 51(4) EPC had been issued. They were not aware of any change in this practice and were accordingly surprised by the decision they were now contesting. They requested that the decision be cancelled, or alternatively that another Rule 51(4) communication be issued on the basis of the same documents as in the communication of 17 January 1985.

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is therefore admissible.

2.The Examining Division rejected the patent application because, the applicants did not, as provided for in Article 97(2)(a) EPC, approve the text which the Examining Division intended to use in granting the European patent. This lack of approval, which the applicants expressly declared in their letter of 28 January 1985, referred not to the actual content of the documents intended for the grant but only to the applicants' request for a separate set of claims for Austria to be allowed.

3.The question as to whether the Examining Division was right to reject the application is thus dependent on whether or not it still ought to have taken into account the set of claims submitted for Austria.

4.As the applicants themselves concede, the set of claims for Austria was only submitted at a very late stage in the proceedings, namely after the Rule 51(4) communication had been issued.

5.According to the Guidelines for Examination Part C-VI 4.8, the Rule 51(4) communication does not open up the possibility of questioning the results of the previous proceedings again. The Board is able to agree with this in principle, for it is not the intention of the said communication to grant the applicant a further period in which to make amendments to his application; it is communications from the Examining Division and the oral proceedings which serve this purpose. In the proceedings in question, the Examining Division issued two communications and two discussions had taken place in which the allowable text of the application was worked out in detail. The Board therefore takes the view that once the Rule 51(4) communication has been sent, the only amendments allowed as a rule should be those which confine themselves to corrections (which are always possible under Rule 88 EPC) or which make obvious improvements to the documents, as by removing discrepancies or inconsistencies (cf. Decision T 171/85 of Technical Board of Appeal 3.2.1 dated 30 July 1986).

6.The present case involves not a change to the documents which are ready for grant in respect of the designated Contracting States except Austria, but allowing a separate set of claims for Austria that was filed subsequently. Of course, it also involves an amendment to the claims, since in the set for Austria the substance claims have to be replaced by process claims. It is because of this that the Guidelines for Examination conclude that filing a separate set of claims for a designated Contracting State is no longer allowable at this stage.

7. The Board is unable to agree with this generalisation. Under Rule 86(3) EPC, further amendments - which includes the submission of a separate set of claims for a given Contracting State - can only be made with the consent of the Examining Division (cf. Legal Advice No. 4/80, OJ 1980, p. 48). The Examining Division has to take the decision on whether to consent to the requested amendment after due assessment of the particular circumstances. In particular, this involves balancing the Office's interest in speedy completion of the proceedings against the applicant's interest in obtaining a patent which is legally valid in all the Contracting States. The Examining Division will not be able to refuse its consent to an amendment if, for good reasons, the applicant was only at that late stage in a position to request the amendment, or if the requested amendment is obviously essential for him and to take it into account would not appreciably delay the grant procedure. In the Board's view the latter situation is the case here. The amendment requested is obviously of importance to the applicant, since the patent he would otherwise obtain for Austria would be open to dispute, and although to take the requested amendment into account would mean a delay in the proceedings, it is one which in view of the importance of the amendment to the applicant is of no great consequence. The fact is that in the present case the substance-directed claims have merely become process claims and are otherwise identical as far as content is concerned.

8. The Examining Division will also have to check that the current Claim 16 is compatible with Article 52(4) EPC and with the Decision of the Enlarged Board of Appeal of 5 December 1984 (OJ 3/1985, p. 64); the applicants themselves in their letter of 5 July 1985 rightly expressed doubts as to the allowability of this claims. The fact that this check is indispensable means that to take into consideration the set of claims for Austria filed later will not additionally delay the grant proceedings.

ORDER

For these reasons, it is decided that:

1. The decision dated 14 February 1986 to reject the European patent application is set aside.

2. The case is remitted to the Examining Division for resumption of the proceedings (taking into consideration the separate set of claims for Austria and examination of the current Claim 16).