T 1959/11 - Filing broader claims in appeal does not work

EPO T 1959/11

For the decision, click here

Key points

• The applicant filed in appeal broad claims than before the Examining Division.
• The Board holds: "Appeal proceedings are intended to review the correctness of the decision of the first instance rather than to continue examination by other means. Thus, pursuant to Article 12(4) RPBA, it is at the discretion of the boards of appeal to admit requests which could have been presented in the proceedings before the department of first instance - or which were submitted but then withdrawn, as in the present case." 
• As a comment, the Board particularly did not seem to appreciate reintroducing in examination appeal requests which were broader than the requests subject of the appealed decision. 
• Withdrawing requests before the Examining Division effectively closes the possibility to present them in appeal, even with the statement of grounds.

Reasons for the Decision

3. Admissibility of requests

3.1 Appeal proceedings are intended to review the correctness of the decision of the first instance rather than to continue examination by other means. Thus, pursuant to Article 12(4) RPBA, it is at the discretion of the boards of appeal to admit requests which could have been presented in the proceedings before the department of first instance - or which were submitted but then withdrawn, as in the present case. When exercising their discretion, the boards take into account the circumstances of the particular case.

3.2 With the statement of the grounds of appeal, the appellant filed a main request and three auxiliary requests. None of these requests is identical to the sole request which was the subject of the contested decision. Instead, these requests correspond to the requests submitted with letter of 17 December 2010, as indicated by the appellant, but subsequently withdrawn and replaced by a sole "amended main request" (see the minutes of the oral proceedings, page 1, second and eighth paragraphs). By taking this course of action the appellant (then applicant), de facto prevented the examining division from reaching a decision on these requests.

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3.4 The board notes that claim 1 of the main request encompasses sequences with at least 85% identity to SEQ ID No:7, while the claim 1 which was the subject of the appealed decision required 100% identity. Claim 1 of the present main request is thus broader than claim 1 decided upon by the examining division: such an amendment cannot therefore be considered a legitimate attempt to overcome the appealed decision. Moreover, the main request comprises claims 4 and 5 which were not part of the request decided upon by the examining division; as is apparent from the examination file, the examining division had raised objections under Articles 54 and 56 EPC against these claims (see the minutes of a telephone conversation sent 21 January 2011). Reinstating this request at appeal would thus compel the board to give a first ruling on critical issues, which is contrary to the purpose of appeal proceedings.

3.5 The board thus makes use of its discretion under Article 12(4) RPBA not to admit the main request into the proceedings. Since claim 1 of the first and second auxiliary requests is identical to claim 1 of the main request, these requests are also not admitted into the proceedings.