T 0996/13 - Reverting in appeal

Key points

• The claims as filed with the Statement of grounds are not admitted in this examination appeal, because they correspond to claims which had been submitted and replaced by other claims before the Examining Division.

EPO T 0996/13  -  link

Reasons for the Decision

1. According to the case law of the Boards of Appeal, the function of an appeal is to give a judicial decision upon the correctness of a separate earlier decision taken by a department of first instance. It is not the purpose of appeal proceedings to give the appellant the opportunity to recast its claims as it sees fit and to have such claim requests admitted as of right into the appeal proceedings. Appeal proceedings are not a second chance to re-run the proceedings before the first instance. This principle is mirrored in Articles 12(4) and 13 RPBA (cf. "Case Law of the Boards of Appeal of the EPO", 7th edition 2013, IV.E.1 and IV.E.4, pages 934 and 984, respectively). In particular, Article 12(4) RPBA empowers the board not to admit requests that could have been presented in the first-instance proceedings.

2. In the present case, after issuing the "extended European Search Report" with the "European Search Opinion" on 7 May 2007, the examining division sent two communications to the applicant (10 January 2008 and 8 October 2009) before issuing the "Summons to attend oral proceedings" on 8 June 2012. In reply to each of these communications and to the Summons, the applicant filed new sets of claims (with letters dated 18 July 2008, 18 February 2010 and 10 August 2012).

3. The claim request filed by the appellant with its statement of Grounds of Appeal is identical to the Main and sole claim request filed with letter dated 18 February 2010. Indeed, also the statement of Grounds of Appeal is almost identical to the submissions filed on 18 February 2010. In the "Summons to attend oral proceedings" issued on 8 June 2012, the examining division raised several objections under Articles 123(2), 54, 56, 84 and 83 EPC against this claim request and referred also to the objections raised in the examination of the parent application against claims directed to antibodies. In reply thereto and in preparation of the oral proceedings before the examining division, the applicant/appellant filed a new Main Request and an Auxiliary Request on 10 August 2012. Thereby, the Main Request filed on 18 February 2010 was withdrawn from the examination procedure.

4. According to the "Minutes of the oral proceedings before the examining division" (hereinafter "the Minutes"), the examination division, after informing the applicant/appellant of its negative opinion on the Main Request and Auxiliary Request filed on 10 August 2012, invited it to file new claim requests. The applicant/appellant did not avail this opportunity and did not file any further claim request (cf. points 7-8 of the Minutes).

5. The reintroduction of a claim request into the appeal procedure, which has been was withdrawn at an earlier stage of the procedure, is not in line with the function of an appeal as referred to in point 1 above (cf. inter alia, T 361/08 of 3 December 2009, point 13 of the Reasons, T 1231/09 of 12 December 2012, point 1 of the Reasons, T 1306/10 of 17 March 2015, point 2 of the Reasons, and "Case Law", supra, IV.E.4.3.3.c), page 1001).

6. In a communication pursuant to Article 17(2) RPBA, the appellant has been informed that the claim request filed with the statement of Grounds of Appeal seemed not to be admissible (Article 12(4) RPBA) and that, therefore, in the absence of an admissible request, the appeal cannot succeed. In addition, the appellant has been informed of the relevance of the objection raised by the examining division under Article 83 EPC (cf. point IV supra).

7. The appellant has not replied to the communication and has not provided any argument or evidence to challenge the board's preliminary opinion and to proof it wrong (cf. point V supra).

8. Thus, according to Article 114(2) and Article 12(4) RPBA, the board decides that appellant's claim request filed with the statement setting out the Grounds of Appeal is not admitted into the appeal procedure. As there is no other request defining the subject-matter of the appeal, the appeal is dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.