T 2508/13 - Reintroducing requests

Key points

• The present decision illustrates once more that requests withdrawn before the Examining Division (during oral proceedings, after a negative opinion on inventive step) can not be presented again before the Board, also not if the requests are additionally a bit broadened. The requests are not admitted.
• " The board considers that the applicant cannot simply withdraw requests when it believes that the examining division does not correctly assess the inventive step of the claimed subject-matter and later on reinstate these or substantially similar requests during appeal proceedings. Such behaviour constitutes "forum shopping", which is not the purpose of appeal proceedings" 

EPO T 2508/13  - link

3. Inadmissible requests

According to Article 12(4) RPBA the board may hold inadmissible facts, evidence or requests which could have been presented in the first-instance proceedings.

In the present case, the applicant, by letter of 10 May 2013, had filed a main request and an auxiliary request during the examination procedure. These requests were discussed during oral proceedings before the examining division. After the discussion of these requests, the examining division informed the applicant that an inventive step could not be acknowledged. The applicant declined to file a new request and subsequently withdrew these requests (see Minutes of the oral proceedings of 18 June 2013, page 1, paragraphs 9 and 11). Only one request was maintained, on which the decision of the examining division was based.

With the statement of grounds of appeal, the appellant filed two auxiliary requests that are essentially similar, but broader in scope than the requests withdrawn before the examining division.

By withdrawing the requests before the examining division, the appellant avoided the issuing of a negative decision on them by the examining division. Therefore, admitting the first and secondary auxiliary requests into the appeal proceedings now would entail the board having to decide on subject-matter that was already present before the examining division (relating to the position of the humidity sensor and relating to means for setting internal reference process parameter values defining an equilibrium condition), but for which no reasoned decision had been given by the examining division. The main purpose of the appeal proceedings is, however, to review the decisions of the department of first instance (see T 1231/09, Reasons 1.3).

In addition, the applicant had declined the examining division's express invitation to file new requests (see Minutes of the oral proceedings of 18 June 2013, page 1, paragraph 9). It did not give any reasons why the current requests had again been filed with the statement of grounds of appeal.

The board considers that the applicant cannot simply withdraw requests when it believes that the examining division does not correctly assess the inventive step of the claimed subject-matter and later on reinstate these or substantially similar requests during appeal proceedings. Such behaviour constitutes "forum shopping", which is not the purpose of appeal proceedings (see T 1067/08, Reasons 7.2).

Therefore, as indicated in the communication pursuant to Rule 100(2) EPC, the board exercises its discretion under Article 12(4) RPBA to the effect that the first and second auxiliary requests are not admitted into the proceedings.

Order

For these reasons it is decided that:

The appeal is dismissed.