T 1780/17 - Rule 100(2) and RPBA

 Key points

• In this examination appeal, the Board issues a Communication under Rule 100(2) EPC. The applicant replies using further processing. This keeps the application alive. 
• However, the claim requests filed with that response are treated as being filed after the expiry of the period specified by the Board in the communication under Rule 100(2) EPC, i.e. under Art.13(2) RPBA. 
  
  
• The applicant had requested oral proceedings with their Statement of grounds as follows: “In the event that the Board of Appeal is minded to refuse the application without the opportunity for further written submission, oral proceedings are hereby requested.”
• The Board notes that the appellant had made further written submissions (namely, with further processing) and that therein no further request for oral proceedings was made. Hence, the decision is issued in writing without oral proceedings. 
• No partial refund of the appeal fee is ordered. The applicant could have obtained a partial refund of the appeal fee by formally maintaining a request for oral proceedings and withdrawing it upon receipt of the summons for oral proceedings. 

Reasons for the Decision

1. Request for further processing (Article 121 EPC, Rule 135 EPC)

1.1 A loss of rights occurring from the failure to reply to a communication, pursuant to Rule 100(2) and (3) EPC, can be remedied with a request for further processing within two months from the communication noting the loss of rights under Rule 112 EPC, provided that the omitted act is complemented within this period (Article 121(1) and (3) in conjunction with Rule 135(1) EPC).

1.2 The omitted act, in the present case, was the reply to the board's communication of 7 December 2020. It was submitted together with the request for further process­ing, within the time limit therefor. In addition, the prescribed fee relating to the requested further processing was paid in due time in accordance with Rule 135(1) EPC.

Hence, the failure to observe the time limit as originally set is deemed not to have ensued, and the appeal proceedings are to be continued on that basis (Article 121(3) EPC).

2. Admittance of the pending claim requests into the appeal proceedings (Article 13(2) RPBA 2020)

2.1 The three claim requests on file were submitted after the expiry of the two-month period specified by the board in a communication under Rule 100(2) EPC.

2.2 Hence, the admittance of those requests is governed by Article 13(2) RPBA 2020, according to which any amendment to a party's appeal case shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.

2.3 Such "exceptional circumstances" have not been invoked by the appellant, at all. The mere fact that the board challenged the admittance into the appeal proceedings of the claim requests filed with the statement of grounds of appeal does not amount as such to "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020. By filing new sets of claims at the outset of the appeal proceedings, the appellant knowingly accepted the possibility that the board exercised its discretion pursuant to Article 12(4) RPBA 2007 to hold inadmissible all the requests which were not subject to the appealed decision. Hence, the negative nature of the board's preliminary opinion does not automatically constitute "exceptional circumstances" that could justify the amendment to the appellant's case at this late stage of the appeal proceedings (see e.g. T 1459/11, Reasons 3.2). Against this background alone, these requests cannot be taken into account.

2.4 Moreover, all these claim requests had already been presented before the examining division, and had later in the proceedings been replaced by other claim requests, i.e. they had been withdrawn. According to the established jurisprudence of the Boards of Appeal, such claim requests cannot be taken into account if being resubmitted in the appeal proceedings (see e.g. T 1656/14, Reasons 2.4; T 1722/17, Reasons 2; T 1421/20, Reasons 5.4.3).

2.5 Rather, the present claim requests could have been considered by the board at a much earlier stage, had the appellant not willingly decided to replace the main request and the first auxiliary request subject to the impugned decision (now main request and second auxiliary request) and to withdraw the present first auxiliary request already during the examination proceedings. The appellant provided no "cogent reasons" that could justify the return to sets of claims replaced or withdrawn during examination proceedings. In fact, the reply to the board's communication under Rule 100(2) EPC does not contain any arguments on substance as to why the appellant would not share the board's assessment as expressed in that communication.

2.6 For these reasons, the main request, the first auxiliary request and the second auxiliary request are not admitted into the appeal proceedings under Article 13(2) RPBA 2020.

3. As there is no admitted set of claims, the appeal must be dismissed under Article 78(1)(c) EPC.

4. Decision in written proceedings (Article 116(1) EPC)

4.1 In their statement of grounds of appeal, the appellant made the following statement:

"In the event that the Board of Appeal is minded to refuse the application without the opportunity for further written submission, oral proceedings are hereby requested."

4.2 The appellant made in fact a subsequent written submission in reply to the board's communication (cf. point VI above). Their reply contained no further request for oral proceedings before the board.

4.3 Since, moreover, the board does not consider holding oral proceedings in the present case to be expedient (cf. Article 116(1) EPC), this decision is handed down in written proceedings (Article 12(8) RPBA 2020).

Order

For these reasons it is decided that:

The appeal is dismissed.