T 1228/13 - Not attending oral proceedings ED

Key points

• In this examination appeal, the applicant had filed new claims after the summons for oral proceedings before the ED, and then did not attend the oral proceedings before the ED. The Board confirms that the Main Request, the claims decided on by the ED, does not meet the requirements of Article 123(2) EPC. 
• The Board then turns to admissibility of the auxiliary requests filed with the statement of grounds. The applicant argues that it only became aware of the objections to the main request in the written decision of the ED, so that the auxiliary requests were filed at the earliest opportunity and could not have been filed earlier, hence they are admissible under Article 12(4) RPBA.
• The Board is not pleased with this strategy of the applicant. "[By] presenting a fresh case just prior to oral proceedings, and not attending these proceedings, the Appellant deliberately renounced to defend its case before the Department of first instance at least in respect of any new objections possibly arising on the basis of the same provisions of the EPC that had already been identified as relevant for the allowability of the amended claims filed previously. Thereby, it deliberately created a situation where any further amended requests that the Appellant considered suitable for addressing these new objections of the Examining Division, rather than be dealt by the Department of first instance, as it could and should have been the case if the Appellant had taken part in the oral proceedings, had to be considered for the first time in appeal. The Board thus concludes that such requests could and should have been filed before the Examining Division."

EPO T 1228/13 - link

3. Admissibility of Auxiliary Requests 1 and 2 as filed with the statement of grounds of appeal

3.1 The Auxiliary Requests at issue were filed with the grounds of appeal and therefore, as far as the appeal proceedings are concerned, at the earliest possible stage. In order to decide whether to hold these requests admissible or not under the provisions of Art. 12(4) RPBA, it is convenient to take a closer look at the course of the examination procedure already resumed above under point II. of the Facts and Submissions.

3.2 As indicated above (see II supra) the Examining Division stated in the communication of 10 May 2011 referring to the set of claims then on file, that "at this point of the procedure oral proceedings seem to be useless".

With letter dated 21 September 2012 - i.e. after the Appellant had filed another version of the claims and the Examining Division had summoned it to oral proceedings for 23 October 2012 and had also informed the Appellant of the preliminary opinion of the Examining Division on the then pending request - the Appellant filed a new (and final) set of claims onto which the decision under appeal is based, i.e. a set of claims in which claim 1 was for the first time based on an embodiment disclosed, according to the Applicant in paragraphs [0030] - [0039] of the application as filed. The Appellant further indicated that "[i]n the event that Oral Proceedings are maintained, the Applicant will not attend and requests that a decision is made on the basis of the presently pending claims."

The Examining Division at the oral proceedings that were held as scheduled in the announced absence of the Appellant, had admitted such last filed set of claims, found this latter not to comply with Articles 56 and 123(2) EPC and refused the application.

3.3 The Auxiliary Requests 1 and 2 as filed with the statement of grounds of appeal allegedly make an attempt to remedy the defects identified in the decision under appeal and the Board examines their admissibility into the appeal proceedings in view of Art. 12(4) RPBA assuming, for the benefit of the Appellant, that these Requests would overcome the grounds for refusal as set out in the decision of the Examining Division.

3.4 The Board in exercising its discretion under Art. 12(4) RPBA needs to establish inter alia whether the requests at issue could have been filed in first instance.

3.5 The Appellant's argument advanced in the oral proceedings before the Board was that, since the Appellant was not present at the hearing before the Department of first instance, it had become aware of the reasons why the Examining Division had not found allowable the set of claims filed with letter of 21 September 2012 only when it received the reasons of the decision under appeal. In particular, only upon reading the decision under appeal the Appellant had become aware of the objections under Art. 123(2) EPC raised by the Examining Division to the last filed version of claim 1.

Therefore, these requests should be considered a response to the decision under appeal and could not have been filed earlier.

3.5.1 Asked about the Applicant's absence in the oral proceedings before the Examining Division, the Appellant argued that, based on what the Examining Division had written on 10 May 2011 (see II supra), it was reasonable for the Appellant to assume that there was no point in participating in a hearing.

3.6 The Board notes however the following:

The Appellant with the latest submission prior to oral proceedings in first instance presented a completely fresh case. The Examining Division could very well have refused this new set of claims under Rule 137 (3) EPC.

Further, the statement of the Examining Division when appointing oral proceedings as "useless" was made in respect to a set of claims different from that submitted by Appellant in preparation of the oral proceedings that had nevertheless been appointed (as explicitly requested again by the Applicant). There appears to be no reason to assume from this statement that the Examining Division saw no point in the Applicant participating in oral proceedings in general, or for assuming that taking part in oral proceedings before that Examining Division was a pointless exercise in general. To the contrary, the Board notes that each time the Appellant filed amended claims, the Examining Division issued a reasoned communication under Article 94(3) EPC.

3.6.1 Moreover, in view of the fact that the Applicant prior to oral proceedings in first instance filed a set of claims amounting to a fresh case, and nevertheless renounced to attend oral proceedings and requested a decision on the basis of the pending claims, the Board cannot agree that a response to the reasons as advanced in the decision under appeal could not have been filed earlier than with the statement of grounds of appeal.

This argument might carry some weight where e.g. an Examining Division refuses a set of claims that had long been in the procedure based on grounds that had not been previously communicated, or perhaps only transpired during oral proceedings. The argument could also be correct if, in the case at issue, the Appellant upon filing new claims prior to oral proceedings had defended this set of claims in oral proceedings and attempted to overcome problems as identified by the Examining Division then and there.

Indeed, by presenting a fresh case just prior to oral proceedings, and not attending these proceedings, the Appellant deliberately renounced to defend its case before the Department of first instance at least in respect of any new objections possibly arising on the basis of the same provisions of the EPC that had already been identified as relevant for the allowability of the amended claims filed previously.

Thereby, it deliberately created a situation where any further amended requests that the Appellant considered suitable for addressing these new objections of the Examining Division, rather than be dealt by the Department of first instance, as it could and should have been the case if the Appellant had taken part in the oral proceedings, had to be considered for the first time in appeal.

3.6.2 The Board thus concludes that such requests could and should have been filed before the Examining Division.

3.7 For this reason, the Board, exercising its discretionary power under Art. 12(4) RPBA, holds inadmissible into the appeal proceedings also the Auxiliary Requests 1 and 2 as filed with the statement of grounds of appeal.

Order

For these reasons it is decided that:

The appeal is dismissed.