T 1480/12 - Combining claims, still need to file claims set

Key points

• Amended sets of claims need to be filed on separate sheets, also in appeal, even if you just combine two claims.

T 1480/12 - 23.01.2015

Dated 10.12.2014 - Board 3.4.03 - publication C - for the decision, click here

This post was kept in stock for some time.

Reasons for the Decision

5. Third auxiliary request

As a third auxiliary request, the appellant requested the grant of a patent on the basis of a claim 1, consisting of a merge of claims 1 and 19 according to the second auxiliary request, recited in the statement setting out the grounds of appeal on pages 27 to 28.

In the communication annexed to the summons to oral proceedings before the board, the appellant was informed that, in order to be considered, new requests should be provided with amended application documents in accordance with Rule 50 EPC.

No such amended application documents were filed in respect of the third auxiliary request, neither before the examining division, nor with the statement setting out the grounds of appeal, nor in response to the communication of the board annexed to the summons to oral proceedings.

Rule 50(1) EPC, in particular in conjunction with Rule 49 EPC, requires amended application documents, such as amended claims, to be presented on separate sheets and meeting certain form requirements. This is essential for further processing of the application, and, not least, avoids any doubts about what exactly is requested to be granted. As such, the board views critically the procedure followed by the examining division, deciding on the third auxiliary request based merely on an indication of the applicant of a merging of claims without any concrete claim being actually filed. In particular, in view of the fact that no amended application documents were filed at all in respect of the third auxiliary request in the first-instance proceedings, the board deemed it necessary in the present case to insist on the filing of proper amended application documents before proceeding to consider any such request. As noted above, no amended application documents were filed in respect of the third auxiliary request in response to the communication of the board annexed to the summons to oral proceedings.

Moreover, it is noted that since claim 1 as recited in the statement setting out the grounds of appeal contains the same unclear feature as claim 1 of the main request, it does not overcome the above objections under Articles 84 and 83 EPC.

For the above reasons, no consent is given to the amendment according to the appellant's third auxiliary request, in accordance with Rule 137(3) EPC.

Order

For these reasons it is decided that:

The appeal is dismissed.