T 0435/11 - A difficult position

Key points

• In this examination appeal, the applicant submitted a main request with the statement of ground that reverted to broader claims that had been submitted during examination but were then narrowed. The ED had refused the narrower claims for lacking basis in the application as filed.
• The Board, reluctantly, admits the main request: "The appellant further submitted that, in the first-instance proceedings, it had focused on more specific requests for efficiency and business reasons. [] Also these arguments do not speak in favour of admission of the main request. Appeal proceedings are not intended to accommodate for a change of mind based on business considerations, []
• The Board states that the applicant had maneuvered itself in "a difficult position" with the narrower claims. " If the appellant in these appeal proceedings is to be afforded a way out at all, it has to be allowed to revert to a claim with the offending features removed, i.e. to claim 1 of the previous main request. The Board therefore decides to exercise its discretion in the appellant's favour and to admit the main request into the proceedings." 

Summary of Facts and Submissions

I. The applicant (appellant) appealed against the decision of the Examining Division refusing European patent application No. 04733534.4, filed as international application PCT/EP2004/005358 and published as WO 2004/102420.

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3. Main request - admission

3.1 In its communication, the Board questioned whether the main request filed with the statement of grounds of appeal should be admitted into the proceedings under Article 12(4) RPBA. Claim 1 of that request essentially corresponded to a claim on which the Examining Division had expressed a negative opinion with respect to novelty and which had subsequently been withdrawn in favour of more restricted claims.

3.2 The present main request corresponds to the main request filed with the statement of grounds of appeal with an amendment intended to address objections under Article 84 EPC raised in the Board's communication. That amendment is not an obstacle to admission of the present main request under Article 13(1) RPBA, but any reason for not admitting the previous main request in principle applies also to the present main request.

3.3 Article 12(4) RPBA refers to "the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings". The appellant argued that since independent claim 1 of the previous main request corresponded to an independent claim filed during the examination proceedings, that request had already been "presented" in the first-instance proceedings. The Board therefore had no power to hold the main request inadmissible.

This argument is not persuasive and goes against the well-established interpretation of Article 12(4) RPBA that this provision applies in particular to requests that were presented in the first-instance proceedings but withdrawn before a decision could be taken on it (see e.g. decision T 922/08 of 13 October 2011, reasons 2.1).

3.4 The appellant further submitted that, in the first-instance proceedings, it had focused on more specific requests for efficiency and business reasons. Furthermore, in its decision the Examining Division had included an inventive step reasoning which applied also to the broader independent claim 1 of the main request.

Also these arguments do not speak in favour of admission of the main request. Appeal proceedings are not intended to accommodate for a change of mind based on business considerations, and, while it is true that the Examining Division in its decision commented on inventive step by way of obiter dictum, such observations cannot be equated to an actual decision on the (withdrawn) request.

3.5 Nevertheless, the Board has to take into account the special circumstances of the case. In the first-instance proceedings, the appellant had introduced limitations against which the Examining Division had raised objections under Article 123(2) EPC, and the appellant had not been able to overcome those objections by further amendment. The appellant had thereby manoeuvred itself into a difficult position. If the appellant in these appeal proceedings is to be afforded a way out at all, it has to be allowed to revert to a claim with the offending features removed, i.e. to claim 1 of the previous main request. The Board therefore decides to exercise its discretion in the appellant's favour and to admit the main request into the proceedings.