T 0556/13 - Still admitting request in appeal

Key points

• The Board decides to admit a request that was not admitted by the OD and was resubmitted with the Statement of grounds. Upon review of the way the OD had exercised its discretion to not admit the late filed request, the Board sees no reason for overruling the OD. 
• However, because the request was resubmitted with the appeal, the Board decides that it has under Article 12(4) RPBA " its own discretionary power to hold auxiliary request 1 inadmissible" .
• The Board refers to the line in the case law that the Board should only review the excerise of the discretion of the OD and comments taht " [i]n the board's view, this jurisprudence is not to be understood as meaning that the discretion conferred on the boards of appeal under Article 12(4) RPBA is limited to such an extent that the board must generally hold inadmissible a request which had not been admitted into the proceedings by the opposition division by a correct discretionary decision []. Rather, the present board recalls that the board's power under Article 12(4) RPBA is a discretionary one, and in these cases, too, it must be exercised as such. According to established jurisprudence, discretion has to be exercised equitably, i.e. all relevant factors which arise in a case have to be considered, taking into account the particular circumstances of the case"

EPO T 0556/13 - link

2. Auxiliary request 1

2.1 Admission into the appeal proceedings (Article 12(4) RPBA)

2.1.1 Under Article 12(1) and (4) RPBA, the board has to take into account everything presented by the parties, inter alia in the notice of appeal, the statement of grounds of appeal and any written reply of the other party or parties, if and to the extent that it relates to the case under appeal and meets the requirements set out in Article 12(2) RPBA. The board, however, has the power to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first-instance proceedings.

[]2.1.3 The present auxiliary request 1 had already been filed as auxiliary request 1 during the first-instance oral proceedings. The opposition division considered this auxiliary request to be late-filed and did not admit it into the first-instance proceedings.


 The opposition division was of the opinion that the subject-matter of independent claim 2 (and of corresponding independent method claim 19) was still not novel with respect to document D8 and that there was no direct and unambiguous basis under Article 123(2) EPC for the amendment in these claims. The opposition division stated with respect to the additional features of claim 2: "(i) said case is cylindrical - which is the case also in D8 in that the housing 4 is said to have an outside diameter (of 83 mm - see col. 16, l. 22 and fig. 1); (ii) said membrane means is disk shaped - which is the case also for the end walls 2 and 3 in D8; (iii) said at least one membrane has a constant thickness - which is true also for the radially outer "membrane" portion of the "membrane means" 2 and 3 of the flowmeter of D8; and (iv) said perimeter comprises a circumference of said disk shape membrane means - which was undisputed to be revealed also by fig. 1 of D8. Hence, there was no doubt that these additional features compared to those of claim 1 of the main request were known from document D8 as well. Therefore, since claim 1 of the main request had been found to lack novelty over D8, the additional features - emanating from the amended dependent claim 16 as granted - cannot render independent claim 2 of the first auxiliary request- [sic] novel.

The opposition division also shared the opponent's opinion that "a constant thickness" of the membrane was not unambiguously disclosed in the application as originally filed (Article 123(2) EPC). The patentee in this respect referred to the figures of the drawings. However, the figures show the membrane only in a schematic cross-sectional view so that it is not clear beyond doubt that the membrane as a whole has a "constant thickness"." (cf. point 18 of the Reasons of the contested decision).

2.1.4 Under Rule 116 EPC, it was at the opposition division's discretion not to admit late-filed amended claims. According to established case law of the boards of appeal, a board of appeal should only overrule the way in which a department of first instance has exercised its discretion when deciding on a particular case if it concludes that it has done so according to the wrong principles, or without taking into account the right principles, or in an unreasonable way. It is generally not the function of a board of appeal to review all the facts and circumstances of the case as if it were in the place of the department of first instance, in order to decide whether or not it would have exercised such discretion in the same way (cf. decisions cited in Case Law of the Boards of Appeal of the European Patent Office, 8th edition 2016, IV.E.3.6).

The board sees no indication that the opposition division exercised its discretion not to admit auxiliary request 1 into the proceedings according to the wrong principles, or without taking into account the right principles, or in an unreasonable way. Nor was the opposition division's discretionary decision challenged by the appellants. Under these circumstances, the board sees no reason to overrule the way in which the department of first instance exercised its discretion.

2.1.5 However, auxiliary request 1, which was not admitted into the first-instance proceedings, was re-filed by the patent proprietor with its statement of grounds of appeal. Hence, under Article 12(4) RPBA, the board had its own discretionary power to hold auxiliary request 1 inadmissible.

2.1.6 The board is aware of the line of jurisprudence of the boards of appeal establishing that, where it has to be decided under Article 12(4) RPBA whether to hold a request not admitted into the first-instance opposition proceedings inadmissible in appeal proceedings, this usually amounts to a review of the opposition division's exercise of its discretion under Rule 116 EPC and therefore that admitting such requests into appeal proceedings under Article 12(4) RPBA undermines the discretion conferred on the opposition division under Rule 116 EPC, unless the opposition division did not properly exercise its discretion (cf. decision T 28/10, point 2.1 of the Reasons, and Case Law of the Boards of Appeal of the European Patent Office, 8th edition 2016, IV.E.4.3.2, a); cf. also Brigitte Günzel, "The treatment of late submissions in proceedings before the boards of appeal of the European Patent Office", OJ EPO 2007, Special edition 2, 30, point 7).

2.1.7 In the board's view, this jurisprudence is not to be understood as meaning that the discretion conferred on the boards of appeal under Article 12(4) RPBA is limited to such an extent that the board must generally hold inadmissible a request which had not been admitted into the proceedings by the opposition division by a correct discretionary decision (cf. similar considerations concerning the admission of a document into the appeal proceedings in decision T 971/11, points 1.2 and 1.3 of the Reasons).

Rather, the present board recalls that the board's power under Article 12(4) RPBA is a discretionary one, and in these cases, too, it must be exercised as such. According to established jurisprudence, discretion has to be exercised equitably, i.e. all relevant factors which arise in a case have to be considered, taking into account the particular circumstances of the case (G 7/93, OJ EPO 1994, 775, point 2.5 of the Reasons; R 11/11, point 9 of the Reasons; T 931/06, point 3.5 of the Reasons; T 23/10, point 2.3 of the Reasons). This requires the board to consider and weigh up the relevant factors having regard to the individual circumstances of each case. Consequently, it is not ruled out that, in view of the particular facts and circumstances of a particular case, the board will not hold a request inadmissible, although it was rightly not admitted into first-instance proceedings by the opposition division. This may occur, for example, if the board is confronted with additional facts and different circumstances or with additional submissions made by a party in the appeal proceedings (cf. for example T 971/11, point 1.2 of the Reasons). Another example could be that the reasons for the contested decision themselves contain considerations which go beyond those which were relevant for the opposition division's discretionary decision not to admit a request. That a board takes into account the specific circumstances of an individual case is not to say that the board re-exercises the discretion of the department of first instance. Rather, it indicates that the board is exercising its own discretion under Article 12(4) RPBA.

2.1.8 The present board took account of the particular circumstances of the case before it when it exercised its discretionary power under Article 12(4) RPBA. The opposition division did not admit auxiliary request 1 into the opposition proceedings and provided sufficient reasoning for that. In this reasoning, however, the opposition division expressed a detailed opinion on the merits of the case with respect to claim 2 of auxiliary request 1, regarding the substantive issues of novelty and added subject-matter (cf. point 2.1.3 above). In view of this, the board considered it appropriate in the present circumstances also to address these substantive issues in the appeal proceedings. However, the board would be in a position to review the findings of the opposition division on novelty and added subject-matter only if auxiliary request 1 were to be taken into account in the appeal proceedings. Therefore, in these particular circumstances, the board, exercising its discretion under Article 12(4) RPBA, took into account auxiliary request 1.

3. Auxiliary request 2

3.1 Extension of the protection conferred by the patent (Article 123(3) EPC)

3.1.1 The opponent argued that, in the granted patent, independent method claim 19 contained the definition "said membrane means comprising at least one membrane having a transverse dimension substantially greater than its thickness; said membrane means comprises at least one membrane having a transverse dimension substantially greater than its thickness and having an axial compliance sufficient to enable said flow tube means to increase and decrease in length without permanent deformation in response to thermal changes of said flow tube means with respect to said case". In present independent method claim 17 the first occurrence of the wording "said membrane means comprising at least one membrane having a transverse dimension substantially greater than its thickness" was deleted.
The opponent insisted that this deletion resulted in an extension of the protection conferred by the patent. The repetition of the above-cited wording resulted in a method that had membrane means with two membranes as shown in figures 2 and 4. The amended claim 17 now required only at least one membrane, which extended the scope of protection. The claim therefore did not meet the requirements of Article 123(3) EPC and, in addition, the amendment was not caused by a ground for opposition, contrary to Rule 80 EPC. According to decision G 1/10 (OJ EPO 2013, 194) correction of the text of a patent was not to be allowed under Rule 140 EPC.

3.1.2 According to the patent proprietor, deletion of the repetition of the wording in method claim 17 did not violate Article 123(3) EPC. The person skilled in the art clearly understood from the wording of the claim, first paragraph, defining that a perimeter of a disk-like membrane means was affixed to a case, that only one disk-like membrane means was required. This portion of the claim further clearly described that said membrane means defined at least one end of the case. Given the clear definition of the membrane means in the first paragraph, the repetition in independent method claim 19 as originally granted would clearly not be understood by a skilled person as implying the provision of two separate membrane means, but would rather be understood as an erroneous repetition. The patent proprietor further pointed out that the deletion of this passage was proposed by the board in its previous decision (cf. T 151/08, point 11 of the Reasons).

3.1.3 The board in its previous decision (cf. T 151/08) merely took note that the wording in question was repeated in granted independent claim 19 and suggested that one occurrence of that wording should perhaps be deleted. This is rather an obiter dictum than a finding of the board. The board therefore has to rule in the present decision whether the deletion of the wording is allowable.

The board agrees with the arguments provided by the patent proprietor. The deletion does not represent an amendment extending the scope of protection within the meaning of Article 123(3) EPC. By deleting the first occurrence of the wording in question no features are removed from the claim, and thus the claim does not extend the protection it confers. Already in granted claim 19 it is clearly defined that the membrane means merely comprises at least one membrane and not at least two membranes. The repetition of the identical definition in granted claim 19 does not add a feature to the claim. The deletion of the repeated wording is rather a correction of the claim wording under Rule 139 EPC. As pointed out in decision G 1/10, point 13 of the Reasons, "it is always open to a patent proprietor to seek to amend his patent during opposition or limitation proceedings and such an amendment could remove a perceived error".

However, an amendment with the (sole) aim of removing a mistake or an error in the claims, description and the drawings of the patent as granted cannot be said to be "occasioned by a ground for opposition under Article 100", as required by Rule 80 EPC. It follows that such mistakes or errors in the unamended part of the text in question may only be removed by way of a correction pursuant to Rule 139 EPC, and that rule and the specific requirements defined therein apply independently of Rule 80 EPC (cf. T 657/11, point 3.4 of the Reasons). The second sentence of Rule 139 EPC reads: "if the request for such correction concerns the description, claims or drawings, the correction must be obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction". In its opinion G 3/89 (OJ EPO 1993, 117) and its decision G 11/91 (OJ EPO 1993, 125), the Enlarged Board concluded that the parts of a European application or patent relating to the disclosure (description, claims and drawings) could be corrected only within the limits of what the skilled person would derive directly and unambiguously, using common knowledge and seen objectively and relative to the date of filing, from the whole of these documents as originally filed. Such a correction was of a strictly declaratory nature and thus did not infringe the prohibition of extension under Article 123(2) EPC 1973 (cf. G 3/89, Conclusion, and G 11/91, Order).
 In the present case, the consecutive repetition of three lines of text defining the same feature twice with the same words makes it evident to the skilled reader that this repetition is erroneous. It is also evident to the skilled reader that this erroneous repetition can be remedied by deleting one occurrence of this text. Therefore, the correction is allowable.