T 0066/12 - Discretion for late filed requests

Key points

• The Board did not admit some late filed auxiliary requests.
• The Board refuses to refer questions to the Enlarged Board. The board observes that " Article 114(2) EPC gives the opposition division the discretionary power to decide whether or not to admit such a request, and that under Article 111(1) EPC the board may also exercise any power within the competence of the department responsible for the decision under appeal. It is thus beyond doubt that in the circumstances specified in the question, the board would in principle have the power to decide not to admit such a request, so that the only question which would remain open would be that of whether the board had exercised its discretionary power correctly. Such a question is however inherently dependent on the circumstances of the particular case, so cannot be considered to be a point of law of fundamental importance. The question proposed for referral therefore does not meet the requirements of the first paragraph of Article 112(1) EPC." 

EPO T 0066/12 -  link

Reasons for the Decision

4. Second, third and fifth to seventh auxiliary requests

4.1 Admissibility of these auxiliary requests

4.1.1 Claim 1 of the second request comprises all the features of claim 1 of the first auxiliary request, together with a definition that the electric power storage device is a battery, and adds the following feature: "a vehicle auxiliary (50) and a fuel cell auxiliary (51) that are connected between the battery (20) and the DC-DC converter (30), wherein the fuel cell auxiliary (51) is driven by the electric power from the battery (20) so as to warm-up and start the fuel-cell (40)".

This latter feature has a basis only in paragraph [0046], lines 34 to 36 of the published patent (and the corresponding passage on page 14 of the underlying application as originally filed). It can thus be assumed not to have been addressed in the search report. This feature might perhaps, as argued by the respondent, contribute to enhancing the overall fuel efficiency. It nevertheless constitutes a new measure to do so which is independent of any measure taken on the basis of the ratio of a maximum output of a fuel cell to a maximum total output of a fuel cell and an electric power storage device as previously claimed. It therefore represents a change in direction of the respondent's case. This is most evident from the fact that the respondent's main arguments concerning novelty and inventive step for the main and first auxiliary requests concerned the use of the battery to provide power for extended periods of time, whereas at least the second half of this added feature concerns only the start-up phase of operation.

The board notes also the following:

- that this feature was introduced into the claims only with the response to the opposition division's summons to oral proceedings (letter dated 21 September 2011),
- that it was introduced there only in the third (of three) auxiliary requests,
- that a similar constellation of requests was retained in the respondent's reply to the grounds of appeal,
- and that it was only in the set of requests filed with the letter date 7 October 2016 in the reply to the board's preliminary opinion that this feature was promoted to a higher request, and one in which it appeared without the additional features of the previous third auxiliary request noted above.

Taking into account all of the above considerations, the board decided to exercise its discretionary power according to Article 13(1) and (3) RPBA not to admit this request into the proceedings.

7. Referral to the Enlarged Board of Appeal

Following the non-admission of the second and third auxiliary requests, the respondent requested the board to refer under Article 112 EPC the question recorded under item VIII above, which the board translates into the language of the procedings as follows:

- Is it legally correct, not to admit into the appeal proceedings, claims, which are based on features which were disclosed in the original description, and which had already been filed during the proceedings before the first instance on time before the oral proceedings in opposition, and which were attached to the response to the statement of grounds of appeal and also to the response to the summons to oral proceedings before the board?

7.1 Article 112(1) and (1)(a) EPC stipulate two separate requirements for a referral to the Enlarged Board. Firstly, it is to be made only in cases where either this is necessary to ensure uniform application of the law or for a point of law of fundamental importance. Secondly, a referral is to be made only if the board considers that a decision in this respect is required.

7.2 Concerning the first of these requirements, no non-uniformity of the application of law has been alleged, so that the referral could only be justified if it concerned a point of law of fundamental importance. The present question concerns a situation in which the board decides not to admit a request in circumstances in which the opposition division did not have the opportunity to decide on the admissibility of a similar request already filed before the date fixed by them under Rule 116 EPC. The board observes however that Article 114(2) EPC gives the opposition division the discretionary power to decide whether or not to admit such a request, and that under Article 111(1) EPC the board may also exercise any power within the competence of the department responsible for the decision under appeal. It is thus beyond doubt that in the circumstances specified in the question, the board would in principle have the power to decide not to admit such a request, so that the only question which would remain open would be that of whether the board had exercised its discretionary power correctly. Such a question is however inherently dependent on the circumstances of the particular case, so cannot be considered to be a point of law of fundamental importance. The question proposed for referral therefore does not meet the requirements of the first paragraph of Article 112(1) EPC.

7.3 For the sake of completeness, and with reference to the second requirement indicated above, the board notes also that the proposed question identifies only three facts underlying the admissibility decision at issue, namely that the feature added was taken from the description, that a request containing it had been filed before the date set by the opposition division under Rule 116 EPC, and that a corresponding request had been filed with the response to the opponent's grounds of appeal. The answer to the question based on only those facts would however not be relevant to the decisions taken by the present board not to admit the second and third auxiliary requests, because as is apparent from sections 4.1.1 and 4.1.3 above, those decisions were based also on other circumstances of the present case, most notably the technical relevance of the added feature in terms of novelty and inventive step, and the specific sequence and timing of the requests presented throughout the proceedings by the proprietor/respondent. An answer to the question as proposed is therefore not necessary in the present case, so that also the requirements of Article 112(1)(a) EPC are not satisfied.

8. The subject-matter of claim 1 of the main and first auxiliary requests being not novel and the other requests from the respondent not having been admitted into the proceedings, the board has to grant the request of the appellant to set aside the contested decision and revoke the patent.