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Key point
2. Auxiliary request
2.1 The appellant filed the auxiliary request with fax on 23 April 2015, i.e. only three working days before the oral proceedings before the Board. Due to this late filing the admission of the request in the proceedings is subject to the discretionary power of the Board in accordance with Articles 13(1), (3) RPBA.
2.2 As put forward during the oral proceedings, the independent claims of the auxiliary request, i.e. including claim 1, have been completely reformulated. Features present in claim 1 of the main request are distributed in different locations in claim 1 of the auxiliary request and are combined with a rather long list of features taken from the description. There are no concrete explanations as to their basis ("all the features set out in section 5.1.2 of the provisional opinion of the Board have been introduced into independent claims" is the only substantiation) and as to these combinations with existing features of this claim. This already makes a prima facie assessment whether the requirements of Article 123(2) EPC are fulfilled impossible. In fact, it is apparently expected that the Board performs the acts the requester should have performed.
This manner of proceeding is regarded by the Board as being contrary to the following conditions frequently applied in connection with Article 13(1) RPBA for its admission: the efficiency of the proceedings should not be impaired and the request being prima facie allowable under Article 123(2) EPC.
1. Main request
1.1 Since the Board considers that the subject-matter of independent claim 1 of the main request lacks inventive step (see below), there is no need to discuss in this decision whether the other requirements of the EPC are fulfilled.
Key point
- " Where the [patent proprietor as appellant] requests the Board to acknowledge [] inventive step, such requests do need a further substantiation also on that issue. For maintenance in amended form as is presently the case, the Board has to be convinced by the appellant-patent proprietor; it does not fall upon the Board to explain why unsubstantiated requests do not fulfil the requirements of the EPC."
2. Auxiliary request
2.1 The appellant filed the auxiliary request with fax on 23 April 2015, i.e. only three working days before the oral proceedings before the Board. Due to this late filing the admission of the request in the proceedings is subject to the discretionary power of the Board in accordance with Articles 13(1), (3) RPBA.
2.2 As put forward during the oral proceedings, the independent claims of the auxiliary request, i.e. including claim 1, have been completely reformulated. Features present in claim 1 of the main request are distributed in different locations in claim 1 of the auxiliary request and are combined with a rather long list of features taken from the description. There are no concrete explanations as to their basis ("all the features set out in section 5.1.2 of the provisional opinion of the Board have been introduced into independent claims" is the only substantiation) and as to these combinations with existing features of this claim. This already makes a prima facie assessment whether the requirements of Article 123(2) EPC are fulfilled impossible. In fact, it is apparently expected that the Board performs the acts the requester should have performed.
This manner of proceeding is regarded by the Board as being contrary to the following conditions frequently applied in connection with Article 13(1) RPBA for its admission: the efficiency of the proceedings should not be impaired and the request being prima facie allowable under Article 123(2) EPC.
1. Main request
1.1 Since the Board considers that the subject-matter of independent claim 1 of the main request lacks inventive step (see below), there is no need to discuss in this decision whether the other requirements of the EPC are fulfilled.
This kind of unusual approach messes up the discussion of the Auxiliary Request, which was filed to address clarity and Art. 123(2) issues, not inventive step...
2.3 It may well be that, as argued by the appellant, the claims had to be re-worded for clarity reasons, but this does not change the issues mentioned above.
2.4 Apart from the issues with Article 123(2) EPC, there is also the further issue with inventive step. In fact, in this respect the respondent was left with only three working days for it to assess whether a long list of new added features taken from the description indeed created more differences of claim 1 over D1, their effects, the problem(s) solved, etc. in terms of inventive step. This cannot be expected of the respondent without adjournment of the oral proceedings (Article 13(3) RPBA), since also on that issue of inventive step there is no clear guidance or argumentation in the accompanying letter applying the "problem-solution" approach starting from D1, according to the Boards of Appeal case law.
2.4 Apart from the issues with Article 123(2) EPC, there is also the further issue with inventive step. In fact, in this respect the respondent was left with only three working days for it to assess whether a long list of new added features taken from the description indeed created more differences of claim 1 over D1, their effects, the problem(s) solved, etc. in terms of inventive step. This cannot be expected of the respondent without adjournment of the oral proceedings (Article 13(3) RPBA), since also on that issue of inventive step there is no clear guidance or argumentation in the accompanying letter applying the "problem-solution" approach starting from D1, according to the Boards of Appeal case law.
In view of the main request, it appears to me that inventive step was not intended to be based on these additional features but on the features already in te main request.
2.5 The appellant argued that the independent claims of the auxiliary request are based on those of the main request (auxiliary request III of the statement of grounds of appeal) with the further addition of all the features listed by the respondent in its reply, page 6, which were regarded by the respondent as leading to an inadmissible intermediate generalisation due to their omission in the claims. For the appellant, the amendments to the independent claims were therefore to simply address this respondent's objection with respect to Article 123(2) EPC.
For these reasons, the respondent could not be surprised by the amendments conducted in the auxiliary request and, hence, the auxiliary request should be admitted in the proceedings, for this reason alone.
2.6 The Board cannot share the appellant's view for the above mentioned reasons (point 2.4) given by the respondent during the oral proceedings.
Where the appellant requests the Board to acknowledge also inventive step, such requests do need a further substantiation also on that issue. For maintenance in amended form as is presently the case, the Board has to be convinced by the appellant-patent proprietor; it does not fall upon the Board to explain why unsubstantiated requests do not fulfil the requirements of the EPC.
In fact, the Board shares the respondent's view that the issue is not a matter of whether the respondent has been surprised by the amendments but rather a matter of a fair conduct from the appellant's side.
Finally, the difficulties to communicate and coordinate with its client, as argued in writing by the appellant (letter dated 23 April 2015), are entirely internal reasons, which cannot be taken into consideration by the Board.
2.7 In view of the above, the auxiliary request is not admitted in the proceedings (Articles 13(1), (3) RPBA).
2.5 The appellant argued that the independent claims of the auxiliary request are based on those of the main request (auxiliary request III of the statement of grounds of appeal) with the further addition of all the features listed by the respondent in its reply, page 6, which were regarded by the respondent as leading to an inadmissible intermediate generalisation due to their omission in the claims. For the appellant, the amendments to the independent claims were therefore to simply address this respondent's objection with respect to Article 123(2) EPC.
For these reasons, the respondent could not be surprised by the amendments conducted in the auxiliary request and, hence, the auxiliary request should be admitted in the proceedings, for this reason alone.
2.6 The Board cannot share the appellant's view for the above mentioned reasons (point 2.4) given by the respondent during the oral proceedings.
Where the appellant requests the Board to acknowledge also inventive step, such requests do need a further substantiation also on that issue. For maintenance in amended form as is presently the case, the Board has to be convinced by the appellant-patent proprietor; it does not fall upon the Board to explain why unsubstantiated requests do not fulfil the requirements of the EPC.
In fact, the Board shares the respondent's view that the issue is not a matter of whether the respondent has been surprised by the amendments but rather a matter of a fair conduct from the appellant's side.
Finally, the difficulties to communicate and coordinate with its client, as argued in writing by the appellant (letter dated 23 April 2015), are entirely internal reasons, which cannot be taken into consideration by the Board.
2.7 In view of the above, the auxiliary request is not admitted in the proceedings (Articles 13(1), (3) RPBA).
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