T 2117/11 - Devolutive effect

Key points

• Before the Examining Division, the applicant had restricted the claims to a first invention, after an objection of lack of unity of invention, both claims having been searched. The refusal and the claims as filed with the Statement of grounds relate to that first invention. After the preliminary opinion of the Board, the applicant replaces the claims by claims directed to the second invention.
• The Board observes that it could refuse to admit the new claims under Article 12(2) RPBA, but adds that the " main obstacle to the admissibility of said requests, in the present case, rather results from the consequences of the devolutive effect associated with the filing of an appeal" 
• The Board then states that "The devolutive effect of the appeal extends only to the part of the impugned decision which is indicated in the statement of grounds for appeal and actually challenged by the appeal (cf. [T 1382/08]). This means that only those issues that were considered and decided upon in the decision can later on be challenged in appeal proceedings."
•  The Board then reasons that the impugned decision did not deal with the second invention, so that it can not be introduced in appeal.
• As a comment, T 1382/08 is about a not appealed part of a decision, namely about the refund of the paid additional search fee. Only the decision on the deemed withdrawal was appealed. This limits the scope of the appeal (Rule 99).
• As a further comment, the main rule of the "devolutive effect"  means that the Board is competent to decide on all issues of the application / patent (CLBA, IV.E.1.2). E.g., if an application was refused only for lack of clarity, the Board can also examine and refuse the application for lack of novelty. 
• My analysis is that the Board could have refused to admit the request quite simply under Rule 137(3) EPC, exercising the power of the ED (Article 111(1) EPC),  and applying the rule of G 2/92 , namely that only one invention is examined (see e.g. T 0736/14). 

EPO T 2117/11 - link

Reasons for the Decision

1. Admissibility of the appeal

The appeal meets the requirements of Articles 106 to 108 EPC and Rule 99 EPC. It is thus admissible.

2. Admissibility of the main and auxiliary requests

2.1 With the statement of grounds, an amended set of claims was filed to replace the set of claims underlying the impugned decision. These amended claims, as well as the claims underlying the impugned decision, were limited to a needle assembly. In the statement of grounds, the appellant took issue with the reasoning of the examining division as it resulted, more specifically, from the communication of 1 October 2010. The appellant, hence, neither filed a request for claims directed to a method, nor commented on the objection of unity which had been raised earlier in the course of the examination proceedings and had eventually led to his opting for claims limited to the needle assembly.

On the other hand, the pending main request, filed by letter of 21 November 2016, and auxiliary request, filed by letter of of 19 December 2016, on which the Board has to adjudicate, concern a method of making a needle assembly. In said letters, the appellant did not contest or even comment the views expressed by the Board in the communication of 2 November 2016 with regard to the request filed with the statement of grounds. Moreover, the appellant did not make any attempt to amend the claims relating to a needle assembly by taking into account the objections and comments of the Board. Instead, the appellant filed two requests both directed to new subject-matter, namely, to a method of making a needle assembly which had been considered by the examining division not to be linked to the needle assembly by a single inventive concept.

2.2 Article 12(2) RPBA specifies, as a general rule, that "The statement of grounds of appeal ... shall contain a party's complete case".

Article 12(4) RPBA further specifies "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".

Moreover, according to Article 13(1) EPC, "Any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the Board's discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.".

It is acknowledged that the applicant would have de facto given up the possibility of obtaining a patent on the basis of the product claims, that it actually privileged, if it had filed the present requests concerning a method of making a needle assembly in examination proceedings as a consequence of the objection of lack of unity. In this respect, Article 12(4) RPBA does not constitute a valid basis for not admitting said new requests.

On the other hand, the criterion of procedural economy relied upon in Article 13(1) RPBA would provide a basis for not admitting the new main and auxiliary requests in the appeal proceedings. This is particularly true, considering the various new issues which would have to be addressed for the first time in appeal proceedings. The Board would consequently have no reason to depart from the principle established in Article 12(2) RPBA, according to which the party's case in the grounds of appeal shall be complete.

However, the Board holds that the main obstacle to the admissibility of said requests, in the present case, rather results from the consequences of the devolutive effect associated with the filing of an appeal.

2.2.1 In examination proceedings, the examining division held that the request which incorporated claims directed to the needle assembly and claims directed to a method of making a needle assembly was not allowable since it related to a group of inventions that was not linked by a single general inventive concept. If the applicant considered that the objection raised by the examining division was not justified, it then had the possibility to maintain its request with both the product and method claims. In this way, a refusal based inter alia on Article 82 EPC could have been challenged before the Board of appeal. However, faced with the objection of lack of unity, the applicant opted for the invention it actually privileged, namely, the set of claims directed to a needle assembly only. By doing so, the applicant's choice entailed that the examination of the application was limited to the selected subject-matter only, i.e. the claimed needle assembly.

The applicant was aware of the consequences resulting from its choice, since it explicitly indicated, in its letter of 29 September 2009, that it reserved the right to file a divisional application relating to the deleted claims. As a consequence of the applicant's choice, the final decision of the examining division was based on the set of claims filed on 29 September 2009, that is, a set of claims exclusively directed to a needle assembly.

2.2.2 The devolutive effect of the appeal extends only to the part of the impugned decision which is indicated in the statement of grounds for appeal and actually challenged by the appeal (cf. decision T 1382/08, not published, cf. Headnote, 3). This means that only those issues that were considered and decided upon in the decision can later on be challenged in appeal proceedings. Under the present circumstances, the decision to refuse the application is based on the set of claims filed on 29 September 2009, i.e. a set of claims limited to a needle assembly. This subject-matter thus defines the limit to the power of the Board to examine the appeal and, if applicable, to set aside the impugned decision.

2.2.3 It is noted, however, that the decision to refuse the application is a decision according to the "state of the file" (see applicant's letter of 25 March 2011) referring to three communications of the examining division instead of containing a complete self-contained reasoning. These communications relate to three different sets of claims filed, respectively, on 8 October 2007, 10 July 2008 and 29 September 2009. It follows that the first and second sets of claims referred to did not underlie the decision in suit.

It could, however, be argued, in favour of the appellant, that the reference to said three communications created some ambiguity as to the actual content of the impugned decision and that the objection of lack of unity addressed in the communications of 8 January 2008 and 19 March 2009 would, after all, be part of the appealed decision.

However, since the statement of grounds of appeal, which defines the limit to the power of the Board to examine the appeal, did not challenge this issue, the argument would be unfounded. The devolutive effect of the appeal would not allow an extension of the scope of the appeal to this particular aspect (cf. decision T 1382/08).

2.3 The fact that the claims of the present main and auxiliary requests relate to a method of making a needle assembly and that the decision to refuse the application concerned such a needle assembly, does not affect the above findings, contrary to the appellant's view. It is stressed, in this respect, that it is not proved that the claimed method according to the pending main and auxiliary requests would necessarily result in the manufacture of a needle assembly as previously claimed. No convergence can thus be recognised between the pending requests and the request filed with the statement of grounds.

2.4 Last, the financial considerations, as raised by the appellant, regarding the costs for filing a divisional application, do not represent an issue which the Board should take into account.

2.5 In conclusion, the Board does not admit the main and auxiliary requests into the appeal proceedings with the consequence that no requests are pending.

Order

For these reasons it is decided that:

The appeal is dismissed.