T 1653/16 - Refused text not on file

Key points

• During oral proceedings before the Examining Division, an Auxiliary Request with amended claims had been informally submitted and were found not allowable. Because the text of those claims is not on file, and because it is not clear from the minutes whether the Main Request was maintained, the first instance decision involves a substantial procedural violation.

EPO T 1653/16 - link

Reasons for the Decision

1. Article 113(2) EPC

1.1 In accordance with Article 113(2) EPC, the European Patent Office shall examine, and decide upon, the European patent application only in the text submitted to it, or agreed, by the applicant.

1.2 In the present case, amendments were proposed in telephone discussions which included an informal submission of an amended claim 21 (cf. the minutes of the oral proceedings, page 1, lines 2-7). This amended version then appears to have been discussed during the oral proceedings [before the Examining Division], and found to be not allowable (cf. the minutes, page 2, last paragraph). However, there is no record in the file of the telephone discussions referred to, nor a copy of the amended claim informally submitted by the applicant, nor any explicit statement explaining the amendments which would enable the new wording to be determined.
Further, from the minutes of the oral proceedings, it is not clear whether the main request was still maintained or whether the applicant even requested a decision on the amended version of claim 21, since it appears that at the end of the proceedings, before announcing the decision, the applicant was not asked to state its final requests (cf, the minutes, page 5, last 5 lines).

1.3 Consequently, the examining division did not establish whether the main request which it refused was the version agreed by the applicant, in violation of Article 113(2) EPC. The examining division thereby committed a substantial procedural violation (cf. T 552/97, point 3 of the reasons ff.).

1.4 Consequently, the decision has to be set aside.

2. Reasoned decision - Rule 111(2) EPC

2.1 It is established case law that a decision, in order to be reasoned within the meaning of Rule 111(2) EPC, must contain at least some reasoning on crucial points of dispute, i.e. deal with at least the main counter-arguments presented by the applicant (cf. e.g. T 70/02, point 7 of the reasons).

2.2 The present decision is based on lack of novelty of the subject-matter of claim 21 with respect to the disclosure of D5 (which was incidentally cited for the first time in the communication accompanying the summons to oral proceedings). With respect to what the examining division considered to be the main request, the reasoning consists of reciting what is assumed to be the wording of the unofficial version of claim 21 submitted by email, annotated with references to D5. The applicant however had challenged this reasoning, cf. the minutes of the oral proceedings which reflect that this matter was discussed extensively (apparently from 10:22 am to 11:50 am, with interruptions). The decision does not deal with any points arising from this discussion. The same applies to auxiliary requests I to III, whereby the board notes that, in respect of auxiliary requests II and III (now auxiliary requests I and II), some features are recited without any reference to passages of D5 at all.

2.3 The board concludes that the decision is not reasoned in the sense of Rule 111(2) EPC. This is a further substantial procedural violation requiring the decision to be set aside.

3. Remittal

It is the established practice of the boards of appeal to remit a case where a substantial procedural violation has been committed. In any case, given that the circumstances of the case would have rendered appropriate the granting of interlocutory revision under Article 109 EPC (see point IV above), it would now be illogical for the board itself to consider the substance of the appeal on its merits, namely the objection of lack of novelty. The case is therefore remitted to the examining division for further prosecution (Article 111(1) EPC).

4. Reimbursement of the appeal fee

As the appeal is allowable by reason of two substantial procedural violations, the board deems the reimbursement of the appeal fee to be equitable (Rule 103(1)(a) EPC).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.

3. The appeal fee is reimbursed.