T 1903/13 - Art 12(4) and not examined requests

EPO Headnote
It is within the board's discretion not to admit auxiliary requests which define subject-matter "diverging" from subject-matter of higher ranking requests, including those requests which, in essence, were filed during first-instance proceedings and re-filed with the respondent's reply, but were not examined by the first-instance department. See point 3.3 of the Reasons.

Key points

• In this case, the OD maintained the patent according to the second auxiliary request. The OD accordingly did not examine the third and further auxiliary requests then on file. The Board finds that the subject-matter of the claims as maintained by the OD is obvious. Hence, the Board has to decide of the further auxiliary requests, as these were re-filed with the appeal proceedings. The Board holds them inadmissible, even though they are not " requests which could have been presented or were not admitted in the first-instance proceedings" because the power of the Board to hold inadmissible requests, is not limited by Article 12(4) RPBA.
• The Board does not admit the requests because the "subject-matter of lower ranking requests which does not converge with the subject-matter of higher ranking requests by comprising features which restrict its scope within the line of development defined by the amendments of the higher ranking requests", applying T 1685/07 not only to requests filed after the summons (as in that case) but also to requests filed with the Statement of grounds.

EPO T 1903/13 - link

Reasons for the Decision

3. Second to fourth auxiliary requests

3.1 The second to fourth auxiliary requests were in essence already filed but not examined during first-instance opposition proceedings and re-filed during appeal proceedings by the patentee with the reply to the opponent's statement of grounds of appeal.

Except for the deletion of an alternative feature in claim 1, i.e. an electromagnetic interference filter, the second to fourth auxiliary requests are identical to the respective auxiliary requests already filed during first-instance opposition proceedings. However, the opposition division had to decide neither on the admissibility nor on the patentability of the subject-matter of these three auxiliary requests because it maintained the patent on the basis of a higher ranking request.

3.2 The opponent requested that the second to fourth auxiliary requests not be admitted into the proceedings because they were directed to subject-matter which did not converge with the subject-matter of the main request and first auxiliary request.

3.3 The board decides to sustain the opponent's request for the following reasons:

3.3.1 The main purpose of the opposition appeal proceedings is to give the parties an opportunity to have the decision of the opposition division reviewed. However, if the patentee, as in the present case, desires to have claim requests reviewed different from those underlying the decision of the opposition division, it is settled case law that the board has a discretion to admit or not these new requests into the appeal proceedings based on whether these new requests fulfil certain criteria (e.g. T 840/93, point 3.1; T 1685/07 point 6.4). Pursuant to Article 123(1) EPC, "The European patent may be amended in proceedings before the European Patent Office ...". From this wording it ensues that a board of appeal has discretion to admit or not new requests into opposition appeal proceedings. In other words, there is no absolute right for the patentee to file amendments. How the board should exercise its discretion to admit parties' submissions is defined inter alia in Article 12(4) RPBA.

3.3.2 Article 12(4) RPBA reads as follows: "Without prejudice to 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, everything presented by the parties under (1) shall be taken into account by the Board if and to the extent it relates to the case under appeal and meets the requirements in (2)".

3.3.3 According to the first part of the sentence of Article 12(4) RPBA, everything filed with the statement of grounds of appeal or the reply is part of the proceedings, except for facts, evidence and requests which could have been presented or were not admitted in the first-instance proceedings. In the present case, despite the fact that the second to fourth auxiliary requests were in essence filed during first-instance proceedings and re-filed with the respondent's reply, the consequence seemingly implied by the first part of the sentence of Article 12(4) RPBA that any requests filed with the statement of grounds of appeal shall be taken into account by the boards, does not apply because these requests were not examined by the opposition division. Otherwise, Article 12(4) RPBA would make it compulsory for the boards of appeal to deal with requests that the opposition division would, in proper exercise of its discretion, not have admitted. Article 12(4) RPBA cannot be construed as restricting the exercise of the discretion under Article 123(1) EPC in such circumstances. No automatic admissibility of auxiliary requests filed during first-instance opposition proceedings and presented under Article 12(1) RPBA can therefore be deduced from Article 12(4) RPBA.

3.3.4 In the context of admittance or not of the present auxiliary requests, the board also notes the pertinent established case law of the boards of appeal. According to this case law the admissibility of amendments depends, among other things, on whether the amended claims converge with or diverge from the subject-matter previously claimed, i.e. whether they develop and increasingly limit the subject-matter of the claims in the same direction and/or in the direction of a single inventive idea, or whether they entail different lines of development because, for instance, they each incorporate different features (see "Case Law of the Boards of Appeal", 8th edition 2016, section IV.E.4.4.4). Indeed, in case T 1685/07, point 6.5, the board concluded that "convergence" or "divergence" was a relevant criterion for the restrictive handling of the admissibility of auxiliary requests.

The present board shares this view and considers that amendments in auxiliary requests should represent a convergent development.

3.3.5 Apart from that, the board notes that the second part of the sentence of Article 12(4) RPBA according to which everything shall be taken into account if and to the extent it relates to the case under appeal, has to be understood in the light of the forementioned "convergence principle" as established in the case law: subject-matter of lower ranking requests which does not converge with the subject-matter of higher ranking requests by comprising features which restrict its scope within the line of development defined by the amendments of the higher ranking requests, i.e. which does not follow the same inventive concept as that of the higher ranking requests, may be considered as not relating to the case under appeal within the meaning of Article 12(4) RPBA and, hence, need not be taken into account in the appeal proceedings.

3.3.6 Present claim 1 of the second to fourth auxiliary requests is considered by the board as diverging from claim 1 of the main request and the first auxiliary request.

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These amendments of claim 1 of the second to fourth auxiliary requests, instead of forming a consistent development of the claimed subject-matter in the direction defined by the consecutive amendments carried out in the higher ranking requests, represent new lines of development diverging from the inventive concept of the main request and the first auxiliary request, i.e. the electrical power supply of the sensors.

3.3.7 Therefore, the board, in exercising its discretion under Article 123(1) EPC, holds the second to fourth auxiliary requests inadmissible for not being convergent with the line of development defined by the main request and the first auxiliary request.

3.4 Counter-arguments by the patentee

The patentee argued that the second to fourth auxiliary requests had been filed in a slightly different form already during the first-instance proceedings, that the filing of the auxiliary requests did not constitute an abuse of procedure and that there was at least a partial convergence with the main request and the first auxiliary request in the sense that claim 1 of all requests defined features for eliminating noise. The patentee also argued that the admissibility of the auxiliary requests should have been decided at the beginning of the oral proceedings which would have allowed the patentee to modify the order of the auxiliary requests.

The board is not convinced by the patentee's counter-arguments for the following reasons:

- As explained above, the board has a discretion not to admit diverging auxiliary requests, including those requests which were filed during first-instance proceedings and re-filed with the respondent's reply but were not examined by the first-instance department.

- The question whether an abuse of procedure occurred in filing the second to fourth auxiliary requests was neither raised by the opponent nor by the board and had no influence on the decision taken by the board in the present case.

- The feature of a Zener diode for eliminating noise was already present in claim 1 as granted. The subsequent amendments of claim 1 of the main request and the first auxiliary request, however, do not contain features related to the elimination of noise (see also point 1.3 above). Therefore, even if it were assumed that the amended features of claim 1 of the second to fourth auxiliary requests, which do not explicitly refer to the elimination of noise, effectively define means for eliminating noise, the aspect of elimination of noise does not represent a consistent development of the amendments of the claims.

- It is the patentee's task and responsibility to present the requests in the order according to which the requests are to be examined by the opposition division and the board.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.