T 0732/11 - Tactical considerations

Key points

• In this examination appeal, a new sole request was filed during the oral proceedings (after the Board had indicated its opinion about the main request). The Board does not admit it into the proceedings.
" The only reason indicated by the appellant's representative as to why this new request was nonetheless only filed during the oral proceedings was that the appellant had considered that they would be able to convince the board that the previous request met the requirements of Article 123(2) EPC, and on this basis had decided not to file any amendments before hearing the board's opinion on this point. Such tactical considerations cannot however justify ignoring the explicit instructions of the board [] "

T 0732/11 - link

Reasons for the Decision

1. The appeal is admissible.

2. Admissibility of request filed during oral proceedings

2.1 The appellant's sole request was filed during the oral proceedings before the board, after the board had given its opinion that the previous request contravened Article 123(2) EPC. The reasons for that opinion had already been presented to the appellant in the board's communication of 15 January 2016. The final paragraph of that communication stated that "the board should not be taken by surprise by ... new requests at the oral proceedings", and that the appellant "may file written submissions in preparation for the oral proceedings up to one month before the date scheduled for the oral proceedings" (emphasis in original).

2.2 The only reason indicated by the appellant's representative as to why this new request was nonetheless only filed during the oral proceedings was that the appellant had considered that they would be able to convince the board that the previous request met the requirements of Article 123(2) EPC, and on this basis had decided not to file any amendments before hearing the board's opinion on this point. Such tactical considerations cannot however justify ignoring the explicit instructions of the board, which instructions reflect the provisions of Article 13(1) and (3) of the Rules of Procedure of the Boards of Appeal (RPBA). Moreover, even if it were considered acceptable to defer filing such requests in this manner, it would nonetheless have been possible (and indeed incumbent on the appellant) to have prepared them in advance of the oral proceedings, rather than obliging the board to interrupt the oral proceedings so that this could be done. Thus, this reason alone cannot justify the admission of this request into the proceedings at such a late stage.

2.3 Two further factors speak against the admissibility of the request, namely:

- Claim 1 of the request differs from that of the previous request (that filed with letter of 12 August 2010) by the deletion of the features corresponding to the original dependent claim 24. Those features had been introduced into the independent claims already with the then applicant's reply of 13 January 2009 to the first communication under Article 94(3) EPC, and had been maintained in the claims since then. Their deletion thus represents a significant change in direction of the appellant's case.

Even though the modified request addresses the objection under Article 123(2) EPC as raised in section 1.1 of the board's communication, it makes no attempt to address the objections of lack of clarity raised in section 2.2, second sentence of that communication. Moreover, since the amendment consists in the deletion of features from the claim, it also could not contribute to addressing the objection of lack of inventive step which was the basis of the decision under appeal. Indeed, the resultant broadening of the scope of the claim might even result in further prior art becoming relevant for the assessment of inventive step. Thus this request prima facie does not meet the requirement established in the case law of the Boards of Appeal that a request filed only at such a late stage of the procedure should be clearly allowable.

2.4 The board therefore, exercising its discretion under Article 13(1) and (3) RPBA, decided to not admit this request into the proceedings.

3. Request for remittal

The appellant requested that if the (main) request were not allowed, the case should be remitted to the department of first instance for further prosecution, in particular to give the examining division the opportunity to decide on the objections under Articles 123(2) and 84 EPC raised by the board. The board however sees itself as being fully in a position to exercise its discretion under Article 111(1) EPC in such a way as to decide on the formal matters discussed during the oral proceedings. The appellant's comment concerning reformatio in peius is not relevant in this context, since the decision under appeal was to refuse the application, so that a decision not to remit the case would not result in any worsening of the position of the appellant, merely a confirmation of that position. The board therefore decided not to remit the case to the department of first instance.

4. Since the appellant's sole request was not admitted into the proceedings, and since the case is not to be remitted to the department of first instance, the appeal has to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.