T 0933/92 (Sensor) of 6.12.1993

Summary of Facts and Submissions

I. This patent application was originally filed under the PCT, and a preliminary examination was carried out under PCT Chapter II. Upon entering the national phase before the EPO, the applicant filed an amended text of the application and requested that a patent be granted on the basis of these amendments.

During examination of the application pursuant to Article 96 EPC, the Examining Division issued a communication dated 19 December 1991 in which objections were raised to the amendments to the original application under Article 123(2) EPC. The communication also stated:

"To overcome the above objection it appears necessary to revert to Claim 1 on which the final report of the preliminary examination was based.

Nor are there any objections to this claim under Article 52(1) EPC (novelty and inventive step)."

The applicant filed observations in reply, in which it disputed the fact that the version of the application as requested displayed deficiencies under Article 123(2) EPC.

The Examining Division issued a decision dated 14 May 1992 in which the application was refused on the ground that the version of the application in force did not satisfy the requirements of Article 123(2) EPC.

The applicant appealed against this decision. In the grounds for appeal it takes the view that there were no objectively valid grounds for refusal of the application under Article 123(2) EPC.

II. Upon examining the appeal pursuant to Article 110 EPC, the Board of Appeal formed a preliminary opinion which agreed with the decision of the Examining Division concerning violation of Article 123(2) EPC but, concerning the existence of an inventive step within the meaning of Article 56 EPC, disagreed with the view set out by the Examining Division in its aforementioned communication of 19 December 1991. The Board of Appeal did not, however, issue any communication to the appellant.

Reasons for the Decision

1. The Board of Appeal is aware of decisions T 60/91; T 96/92, OJ EPO 1993, 551, and T 488/91 (the point of law referred to the Enlarged Board of Appeal was published in OJ EPO 1993, 478), in which the following twofold question has been referred to the Enlarged Board of Appeal as an important point of law:

"A. Is the Board of Appeal allowed to modify a contested decision to the detriment of the appellant?

B. If so, to what extent?"

This question is currently pending before the Enlarged Board of Appeal in cases G 9/92 and G 4/93.

In the above decisions, this question has been referred to the Enlarged Board of Appeal in the context of opposition proceedings.

2. The Enlarged Board of Appeal considered the nature and purpose of the appeal procedure under the EPC in decisions G 9/91 and G 10/91, OJ EPO 1993, 408 and 420, but only in the context of opposition proceedings (see paragraph 18).

3. The present Board of Appeal is aware of previous decisions of other Boards of Appeal in which an application has been refused on a different ground from that which was relied upon by the Examining Division in the contested decision.

The present Board of Appeal considers that the extent both of the duties and powers of a Board of Appeal, when examining an appeal from a decision of an Examining Division under Article 110 EPC, to consider whether the application satisfies requirements of the EPC which the Examining Division regarded as having been met in the examination proceedings and which were not therefore relied upon in its decision as grounds for refusal of the patent application, is not entirely clear.

This question concerns the essential function of a Board of Appeal when examining an appeal from a decision of an Examining Division and therefore involves an important point of law.

ORDER

For these reasons it is decided that:

The following points of law shall be referred to the Enlarged Board of Appeal under Article 112(1)(a) EPC:

"1. In an appeal from a decision of an Examining Division in which a violation of one or more specified requirements of the EPC has been relied upon as the ground for refusal of a European patent application, when examining the appeal under Article 110 EPC does the Board of Appeal have either the obligation or the power to examine whether the application meets other requirements of the EPC which the Examining Division regarded as having been met in the examination proceedings and which have not therefore been relied upon in its decision as grounds for refusal of the patent application?

2. If a Board of Appeal does not have such an obligation but has such power, under what circumstances should it use such power?"