29 Sep 2016

T 1784/14 - Not substantiated is not filed

Key points

  • Auxiliary requests were timely filed but without substantiation. They are therefore deemed not validly filed. The Board : " as set out in T 1732/10 (point 1.5), unsubstantiated claim requests which are not self-explanatory become effective only at the date on which substantiation is provided (see also 217/10; point 5). Their filing in and of itself plays no role, no matter when they are filed." 

EPO Headnote

If no substantiation is provided, at any stage during the appeal proceedings, for claim amendments which are not self-explanatory, the requests containing those amendments may be considered not validly filed (point 3 of the Reasons, T 1732/10 followed)

T 1784/14 -  link


Reasons for the Decision


First to third auxiliary requests
3. Admission
3.1 The first to third auxiliary requests were filed, or at least referred to, by the respondent in its response to the statement of grounds of appeal. These auxiliary requests correspond to the fourth to sixth auxiliary requests submitted during the opposition proceedings.
3.2 The only submissions the respondent made with regard to these auxiliary requests are those in its letter dated 10 March 2015:
"Furthermore, in the event that the Board of Appeal ultimately concludes that the Main Request cannot be granted, I request that the proceedings are remitted back to the Opposition Division for consideration of the Fourth to Sixth Auxiliary Requests as filed on 19 November 2009 [the present first to third auxiliary requests]. It will be appreciated that these claim requests have not previously been considered by the Opposition Division.Finally, in the event the Board of Appeal both concludes that the Main Request cannot be granted and decides against remittal, I request consideration in the present appeal proceedings of the Fourth to Sixth Auxiliary Requests as filed on 19 November 2009" (insertion in square brackets by the board).
Consequently, the respondent has not provided a single argument to substantiate why the amendments in the auxiliary requests have overcome the objections made by the appellants against the main request.


3.3 Even after the board had reiterated in its preliminary opinion the appellants' inventive-step objection on the basis of A5 (point 4.1.1), and had observed that there was no explanation as to how the amendments related to the appellants' objections (point 6), the respondent did not file any such explanation. Instead, it simply announced that it would not be attending the oral proceedings.
3.4 A substantiation as to why amendments are filed may exceptionally not be needed if they are self-explanatory in the sense that they are such as to put the board and the other party in a position to understand - without any further explanation - why they overcome any outstanding objections. This condition is however not met in the present case. More specifically, in the present case it is not at all clear why the amendments in the auxiliary requests, i.e. the reduction of the upper limit of the GPS-1 amount to 1.5 wt% in the first auxiliary request, the restriction to process claims in the second auxiliary request (all product claims being deleted) and the further restriction of the type of solvent in the third auxiliary request overcome the inventive-step objection based on A5.
3.5 As set out in T 1732/10 (point 1.5), unsubstantiated claim requests which are not self-explanatory become effective only at the date on which substantiation is provided (see also 217/10; point 5). Their filing in and of itself plays no role, no matter when they are filed. While in the case underlying that decision, substantiation was provided shortly before the oral proceedings, and the claim requests were deemed to have been validly filed at that point in time, the situation in the present case is even worse in that no substantiation was provided at any time during the entire appeal proceedings. As a logical consequence, the claim requests must be considered not validly filed at all.
3.6 Any other conclusion would have as a consequence that by submitting claim requests without explanation and by simply requesting, as in the present case, a remittal to the first instance for consideration of these requests, a decision could be deliberately delayed. That would not be conducive to procedural efficiency and in fact would almost amount to an abuse of procedure.
3.7 Therefore the board decided that the auxiliary requests could not be considered validly filed. Since the auxiliary requests were not part of the present appeal proceedings, no decision on their substance needed to be taken by the board.
Request for remittal
4. For the same reasons, the request for remittal based on these auxiliary requests could also not succeed.
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The patent is revoked.

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