T 0184/13 - Reintroduced request not admitted

T 0184/13

For the decision, click here

Key points

• If a claim request is withdrawn before the ED, it can not be presented in appeal: the request is not admitted into the proceedings (Article 12(4) RPBA).
• "The board sees the appellant's argument that the amendment filed to overcome the objections of the examining division "was not in fact necessary" [...] as reinforcing its view that the appellant should indeed have maintained those claims before the examining division e.g. by filing them at least as an auxiliary request so that it would have obtained an appealable decision on them. " 

Reasons for the Decision

1. MAIN REQUEST

This request corresponds to the set of claims filed for the first time in the first-instance proceedings on 3 May 2012 (as the then applicant's sole claim request).

1.1 Admission into the appeal proceedings

The claims of this request had already been discussed and objected to under Articles 123(2) and 84 EPC [...] in the first-instance proceedings (see minutes of the oral proceedings held on 13 June 2012 before the examining division, items 3.1 and 3.2). The then applicant, of its own volition, subsequently replaced those claims with a new set of claims including an amendment in order to overcome those objections (cf. minutes of the first-instance oral proceedings, item 5). On the basis of this amended claim request the application was eventually refused under Article 56 EPC (cf. point I above). Furthermore, the appellant did not provide any further substantiation, as to the objections raised by the examining division under Articles 123(2) and 84 EPC, for re-filing the abandoned claims in the appeal proceedings.

It follows from the above that the claims of the present main request had already been presented in the first-instance proceedings and were thereafter abandoned. That prevented them from being decided on their merits by the examining division, with the consequence that this board would have to decide on the main request as if it were a first-instance department. Such a situation, however, is generally to be avoided (see e.g. ex parte cases T 922/08, point 2.1; T 2278/08, point 2; T 1231/09, point 1). The board concludes therefrom that this claim request not only could but also should have been presented and prosecuted in the examination proceedings within the meaning of Article 12(4) RPBA.

The board sees the appellant's argument that the amendment filed to overcome the objections of the examining division "was not in fact necessary" (see statement setting out the grounds of appeal, page 3, third paragraph) as reinforcing its view that the appellant should indeed have maintained those claims before the examining division e.g. by filing them at least as an auxiliary request so that it would have obtained an appealable decision on them. Therefore, in the exercise of its discretion, the board declined to admit this request into the appeal proceedings.

1.2 In conclusion, the main request is not admissible under Article 12(4) RPBA.