T 2598/12 - Unsubstantiated request not admitted

EPO Headnote
There is no time bar to the requirement following from Article 12(2) and (4) RPBA that a request filed during appeal proceedings must be properly substantiated (cf. point 1.8 of the reasons). Consequently, this requirement applies, mutatis mutandis, to new requests filed in response to a communication of the board.

Key points

• In this examination appeal, the applicant had filed a new claim 1 with the written submission. The new main request was "not accompanied with arguments explaining how the amendments overcome the objections leading to the decision to refuse the application, i.e. why the subject-matter of claim 1 involves an inventive step with regard to documents D3 and D4." 
• The Board does  not admit the main request (also) for this reason. Also requests filed with the written submissions in advance of oral proceedings before the Board, should be substantiated, just as requests filed with the  Statement of grounds (or response) under Article 12(4) RPBA.
• The applicant had also argued that the request should be admitted, because of the drop in quality of the first instance decision. " In respect of the alleged drop in quality of the first instance decisions, the board notes that the appellant has not alleged that this applies in the present case, and indeed, in the present case, the board finds no reason to criticise the quality of the examination, noting that the board in its preliminary opinion essentially agreed with the conclusions of the examining division. " 

EPO T 2598/12 - link

Reasons for the Decision

1. Main request - admissibility

1.1 Claim 1 of the main request, which was presented at the oral proceedings for the first time, is substantially amended as compared to claim 1 of either the main or first auxiliary request submitted with the statement of grounds of appeal. It is essentially based on claim 1 of the second auxiliary request as filed with the letter dated 10 July 2017 in response to the board's communication and includes features which had not been included in any claims submitted during in the examination procedure.

1.2 Amendments to a party's case after filing the statement of grounds of appeal are governed by Article 13 RPBA.

In accordance with Article 13(1) RPBA, any amendment to a party's case after it has filed its grounds of appeal 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. One of the criteria used by the boards when exercising their discretion is whether or not the new claims are prima facie allowable.

1.3 In addition to Article 13 RPBA, the board draws attention to the provisions of Articles 12(2) and (4) RPBA.

In accordance with Article 12(2) RPBA, the statement of grounds of appeal shall contain a party's complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts evidence and arguments relied on.

In accordance with Article 12(4) RPBA, without prejudice to the power of the board to hold inadmissible requests which could have been presented in the first instance proceedings, everything presented by the parties under Article 12(1) RPBA shall be taken into account by the board if and to the extent it meets the requirements in Article 12(2) RPBA.

1.4 Article 12(4) RPBA, although referring to Article 12(1) and (2) RPBA concerning the notice of appeal and the statement of grounds of appeal, also applies to requests submitted later in the appeal proceedings, it being noted that a restriction in its application by the time limit for filing the statement of grounds of appeal would not seem to serve any useful purpose and might even result in a possibility of artificially circumventing Article 12(4) RPBA (cf. T 144/09, point 1.17 of the reasons).

1.5 With regard to Article 12(4) RPBA, the board cannot see why the present request could not have been submitted during the examination procedure, and notes in particular that at the oral proceedings before the examining division, the applicant expressly did not wish to submit any more requests (cf. the minutes, point 7.1). The board further notes that the appellant did not even submit the present request with the statement of grounds of appeal, noting that Article 12(2) RPBA stipulates that the statement of grounds shall contain the appellant's "complete case".

1.6 The appellant argued that it did not file the request before the examining division as it was not in a position to know the outcome of the examination procedure. The appellant further argued that the quality of first instance decisions in the EPO had diminished, which meant that it was not fair to assume that the applicant was in a position to present everything in the first instance proceedings. It was essential to have a second instance which was more than a review instance and which "knows what it is doing" in order to compensate for the fall in quality of the first instance. The appellant stated that the German Federal Patent Court (Bundespatentgericht) allowed amendments and a full examination of the substantive issues. The appellant further stated that although the request could have been filed with the [statement of grounds of] appeal, time was short when reacting to the decision. There must also be some possibility to react to the board's preliminary opinion. The appellant further drew attention to the fact that the case had been pending for 11 years, 5 of which were with the board, but at least now there was possibility of discussing the case all day. It would be unfair to deprive the appellant of this possibility, especially given that the office had received renewal fees whilst the application had been pending for such a long time. Consequently, it was only a fair treatment to admit the new request.

1.7 The board finds these arguments either unconvincing or not relevant. In respect of the alleged drop in quality of the first instance decisions, the board notes that the appellant has not alleged that this applies in the present case, and indeed, in the present case, the board finds no reason to criticise the quality of the examination, noting that the board in its preliminary opinion essentially agreed with the conclusions of the examining division. As to the argument that the outcome of the examination procedure was not known, the board notes that the applicant was informed at the oral proceedings of the examining division's conclusions with respect to the requests on file, and expressly declined the opportunity to file another request (cf. the minutes, points 4.4, 6.4 and 7.1). As to the length of the proceedings and the corresponding payment of renewal fees, the board sees no logic dictating that the provisions of Articles 12(2) and 12(4) RPBA should not be applied.

1.8 As noted above, it is a further requirement in appeal proceedings that the appellant set out in writing the reasons as to why the decision under appeal should be "reversed, amended or upheld" and specify expressly all the facts, arguments and evidence relied on (cf. Article 12(2) RPBA). This is a prerequisite in order for the matter to be taken into account (cf. Article 12(4) RPBA).

Logically, this prerequisite applies in appeal proceedings without any time bar, i.e. also to requests filed in response to the board's communication, for the same reasons as given in connection with that aspect of Article 12(4) RPBA dealing with requests which could have been filed or were not admitted in the first instance proceedings (cf. T 144/09, ibidem, and point 1.4 above).

1.9 In the present case, as pointed out above (cf. point 1.1), claim 1 is essentially based on claim 1 of the second auxiliary request filed with the letter dated 10 July 2017 in response to the board's communication. This second auxiliary request was however not accompanied with arguments explaining how the amendments overcome the objections leading to the decision to refuse the application, i.e. why the subject-matter of claim 1 involves an inventive step with regard to documents D3 and D4.

1.10 The appellant argued that the reasons given in the reply to the board's communication implicitly concerned the differences with respect to D3 and D4. The board however finds this unconvincing. The appellant's submission rather serves merely to explain in short the "invention" as described in the description, but in no way constructs an argument as to how the objection of lack of inventive step has been overcome, which at the least would require pointing out the differences over the prior art documents D3 and D4 and the significance thereof. Furthermore, an implicit argument does not meet the requirement that the appellant should specify expressly the arguments relied on (cf. Article 12(2) RPBA).

1.11 The board further notes that, since no new objections had been raised by the board in its communication, the filing of the second auxiliary request cannot be considered as an attempt to overcome objections raised by the board for the first time. Nor did the appellant argue otherwise.

1.12 The above deficiencies in respect of the second auxiliary request apply, mutatis mutandis, to the present request and count further against admitting this request.

1.13 It is further noted that if the request were admitted, the examination of claim 1 with respect to novelty and/or inventive step would in the board's estimation require a detailed analysis of D4, since, prima facie, D4 appears to be highly relevant and now probably represents the closest prior art. D4 is however a relatively complex document. The board would be forced either to examine claim 1 itself with respect to D4 in the oral proceedings, or to remit the case for further prosecution. The first option would run contrary to the purpose of appeal proceedings (cf. G 10/93, OJ EPO 1995, 172, point 4 of the reasons), which is essentially to examine the correctness of the first instance decision rather than to give a ruling on substantive matters which have not previously been examined (this indeed being essentially the reason why the boards are empowered under Article 12(4) RPBA to not admit requests which could have been presented before the first instance). The second option would run contrary to the requirement for procedural efficiency (cf. Article 13(1) RPBA).

1.14 Finally, for the sake of completeness, the board considers that claim 1 would likely not satisfy the requirement for an inventive step. The appellant's main argument put forward at the oral proceedings was that neither D3 nor D4 disclosed an execution component separate from the network adaptor, in contrast to the alleged invention, in accordance with which the network adaptor was relieved of this task. The board however notes that claim 1 does not require that the execution component is separate from the network adaptor.

Hence, the request is prima facie not allowable (cf. point 1.2 above).

1.15 For the above reasons, the board decided not to admit the main and sole request.

2. Conclusion

As there is no admissible request, it follows that the appeal is to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.