T 2124/21 - Refusal after 16 years

Key points

• "On appeal, the sole request subject of the appealed decision was abandoned, and amended requests were filed instead."
• The applicant then wished to return to the claims considered in the appealed decision. This is a case amendment, and these claims are not admitted.
• The appeal against the refusal of the application is dismissed.
• PCT application filed in 2008, request for entry in 2010. Start of the examination and first communication in 2017 (!). Next action: summons for oral proceedings in 2020. Refusal of the application in 2021 for lack of inventive step. Oral proceedings before the Board: January 2024. Decision in writing: March 2024. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

https://www.epo.org/en/boards-of-appeal/decisions/t212124eu1

9. By the statement of grounds of appeal, however, the appellant abandoned the request subject of that decision and, instead, directed its appeal case to two amended requests. Thus, the appellant made a choice, at the outset of appeal proceedings, not to seek a review of the appealed decision and thereby prevented the board from pursuing the primary object of the appeal proceedings (cf. Article 12(1)(a) and (b) and (2) RPBA). The board cannot be expected to begin the judicial review of the appealed decision only at the last stage of the appeal proceedings (a.k.a. the third level of the convergent approach, see OJ, Suppl. 2/2020), at which the sole request appeared as an amendment, and at which its admittance was subject to two increasingly stringent sets of admittance conditions under Article 13(1) and (2) RPBA.

10. The fact that the present amendment does not imply a substantial technical change of the claimed subject-matter, is also not a circumstance that justifies admittance of the sole request. Rather, the only exceptional aspect of the present case is the appellant's own choice to avoid the board's review of the appealed decision until the last stage of the appeal proceedings. As not contested by the appellant at oral proceedings, the preliminary objection raised under Article 123(2) EPC against the then freshly filed Main Request and First Auxiliary Request is not an exceptional circumstance.

11. Therefore, there are no exceptional circumstances. Let alone has the appellant presented any cogent reasons.

12. As a result, the board decided not to take the sole request submitted with the reply to the board's communication under Article 15(1) RPBA into account (Article 13(2) RPBA).

13. Since there is no admitted request on file, the appeal must be dismissed.