T 1768/11 - Decision state of file

Key points

• In this case, the Examining Division had raised new issues in the summons for oral proceedings. Instead of replying, the applicant requested a refusal decision according to the state of the file. Only with the appeal did he file claim requests addressing the issues raised in the summons. Such requests are as a rule, inadmissible under Article 12(4) EPC. The Board exceptionally admits them because they present the Board with no difficulties (in rejecting the claims under Article 84 EPC).
• The appeal was admissible, even if the applicant did not comment on one independent claim, which he had apparently overlooked. 

Reasons for the Decision

1. Admissibility of the appeal

1.1 According to Rule 99(2) EPC, the statement of grounds of appeal is to indicate the reasons for setting aside the decision impugned. If this requirement is not complied with before expiry of the time limit for filing the statement of grounds of appeal, the appeal is to be rejected as inadmissible (Rule 101(1) EPC). For the statement of grounds of appeal to comply with Rule 99(2) EPC, it should address in sufficient detail each of the grounds for the decision (see decision T 305/11 of 26 April 2016, reasons 1.1, and the decisions cited there). In principle, a ground for refusal can be addressed by arguing why the objection raised was incorrect or by amending the application and explaining why the objection is no longer relevant.

1.2 In the present case, one of the grounds for refusal is lack of inventive step in the subject-matter of independent claims 1, 5 and 9 of the set of claims filed with the letter of 2 October 2008. With the statement of grounds of appeal, the appellant amended these claims in accordance with a main request and first and second auxiliary requests and submitted arguments in support of inventive step. These arguments fully rely on the feature "the information storage medium is a read-only storage medium" added to independent claims 1 and 9 of each request. Independent claim 5 of each request, however, was identical to claim 5 of the set of claims filed with the letter of 2 October 2008 and did not include this feature. Hence, it could be argued that the statement of grounds of appeal fails to address the lack of inventive step objection raised against claim 5.

1.3 At the same time, it is apparent that the appellant, when preparing the statement of grounds and the replacement application documents, must have overlooked the fact that its claims included an independent claim 5 in addition to independent claims 1 and 9. In fact, not only did the appellant fail to add a limitation to a read-only storage medium to claim 5 of all requests, but it also forgot to apply to claim 5 of the two auxiliary requests any of the other amendments that it did make to independent claims 1 and 9 of those requests. In its letter of 9 January 2017, the appellant confirmed that it had overlooked independent claim 5.

1.4 Thus, it is evident from the statement of grounds of appeal how the appellant intended to overcome the lack of inventive step objections raised against all independent claims. The Board considers, therefore, that the statement of grounds of appeal does address these grounds for refusal in sufficient detail.

1.5 As the statement of grounds of appeal also addresses the remaining grounds for refusal of the set of claims filed with the letter of 2 October 2008, namely by giving arguments why the objections under Articles 84 and 123(2) EPC were not justified, the appeal is sufficiently substantiated.

1.6 The appeal also complies with the other provisions referred to in Rule 101 EPC. It is therefore admissible.

2. The decision under appeal

2.1 According to the contested decision, the applicant was informed in the communications dated 2 June 2008 and 7 December 2010 of the reasons why the application did not meet the requirements of the EPC. This can only be taken to mean that the grounds for refusal are the objections raised in those two communications.

The communication dated 2 June 2008 was based on the claims (and other application documents) "as published" and contained objections under Articles 54, 56 and 84 EPC. By letter of 2 October 2008, the applicant replaced the claims as published with a set of amended claims 1 to 11. The objections raised in the communication of 2 June 2008, which form part of the grounds for refusal, are thus based on a text that was no longer approved by the applicant. This is in violation of Article 113(2) EPC, which requires the EPO to decide on a European patent application only in the text submitted to it, or agreed by, the applicant.

2.2 In the present case it can be deduced from the file that the Examining Division intended to refuse the application for the reasons given in the communication dated 7 December 2010. That communication was self-contained and clearly identified both the text on which it was based and the objections being raised. Furthermore, it is apparent from the statement of grounds of appeal, which refers only to the "Summons dated 7 December 2010" and the objections raised therein, that the appellant had not been confused by the superfluous and incorrect reference to the communication of 2 June 2008. The Board therefore considers that, despite the fundamental character of Article 113(2) EPC, an immediate remittal to the Examining Division would serve no purpose.

3. Admission of the main request and first and second auxiliary requests

3.1 In its communication, the Board expressed concerns as to whether the main request and first and second auxiliary requests filed with the statement of grounds of appeal should be admitted into the proceedings under Article 12(4) RPBA. These concerns are still valid for the current main request and first and second auxiliary requests, which were obtained from the previous requests by including in claim 5 of each request a feature specifying that the information storage medium is a read-only information storage medium.

3.2 The Examining Division's communication of 7 December 2010 was annexed to a summons to oral proceedings. By letter of 8 March 2011, the appellant responded by requesting "that instead of Oral Proceedings an appealable decision be issued based on the state of the file". The appellant neither commented on the substance of the communication of 7 December 2010 nor submitted amended claims.

After the Examining Division had issued the requested decision, the appellant filed the present appeal and, with its statement of grounds of appeal, replaced its sole substantive request with a new main request and first and second auxiliary requests.

3.3 Requesting a "decision on the state of the file" instead of responding in substance to objections raised in a communication may be a proper course of action where, for example, the applicant considers that the application is in an allowable state and all arguments have been sufficiently put forward (cf. Guidelines for Examination, E-IX, 4.4). But in the present case, the Examining Division's communication of 7 December 2010 had raised new objections and introduced a new prior-art document. Instead of responding to those objections with substantive submissions, the appellant chose to request a decision on the state of the file and to file an appeal. Only with the statement of grounds of appeal did the appellant, for the first time, respond in substance to the Examining Division's new objections.

3.4 According to Article 12(4) RPBA, a board of appeal has the power to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first-instance proceedings.

This provision reflects the principle that appeal proceedings are not intended as a continuation, let alone a replacement, of the first-instance proceedings. Parties to EPO proceedings are not at liberty to forgo the proceedings before a department of first instance and take their case directly to a board of appeal for further prosecution. They can rely on the boards of appeal for a judicial review of the first-instance decision, not for a continued full examination of the merits of the application.

3.5 Upon receiving the Examining Division's summons to oral proceedings, the appellant was in the same position as later when it filed the statement of grounds of appeal; the decision to refuse the application merely confirmed the objections previously communicated. Thus the appellant should have realised that the newly raised objections necessitated the filing of amended requests. It also had the opportunity to file such requests before the date fixed by the Examining Division under Rule 116 EPC. Yet it refrained from doing so. It appears that the appellant preferred to discontinue the still-ongoing proceedings before the Examining Division and to prosecute its case instead directly before the Board. But Article 12(4) RPBA is intended to prevent just that.

3.6 Thus, the present case is one where the appellant could - and should - have presented its new requests in the first-instance proceedings, and consequently the Board may exercise its power under Article 12(4) RPBA to hold them inadmissible (see also decisions T 1212/08 of 13 January 2012, reasons 4.1 to 4.7; T 1108/10 of 9 March 2012, reasons 3.2.1 to 3.2.5; and T 1178/08 of 9 May 2012, reasons 2.6 to 2.6.4). Nevertheless, since the requests now on file present the Board with no difficulties, it decides to exercise this discretionary power in the appellant's favour and to admit them into the proceedings.