T 2324/14 - The meaning of "not admitting"

Key points

• In this examination appeal case, an auxiliary request was not admitted under Rule 137(3) EPC by the Examining Division because prima facie it did not overcome the deficiencies of the main request. The Board needs to decide whether the ED actually did  not "admit" the request in the sense of Article 12(4) RPBA, or did something else with the request. The issue is that the Examining Division that the auxiliary request "prima facie [... did] not overcome the objections" raised against the main request. However, it then indicated which specific objections were not remedied. 
• "The board considers that, contrary to the wording of the decision, the examining division did not limit its examination of the auxiliary request to prima facie considerations. It concludes that the discretionary decision was incorrect even though it was based on right principles (see G 7/93, reasons 2.6). In fact, the examining division considered the auxiliary request fully, since it was able to give sufficient reasons for its conclusion that a patent could not be granted on the basis of the auxiliary request. The examining division thus having considered the auxiliary request fully, the board takes the view that there was no discretion left for the examining division "not to admit" it." Therefore, the Board considers that Article 12(4) RPBA obliges it to take into account the request at issue.
• The Board makes some interesting observations about some basic terminology in the EPC. "The EPC does not define what it means for an examining division to give or deny its consent to an amendment under Rule 137(3) EPC." "[The] EPC also does not specify what it means for a submission to be "admitted"." 
• " The EPC also does not define how the examining division should exercise its discretion under Rule 137(3) EPC. The boards of appeal have, however, accepted that the examining division may base its decision to deny consent to an amendment on prima facie considerations and that it may deny its consent to an amendment with prima facie deficiencies. 
• "A prima facie judgment is one which is made at first sight and is commonly understood to be one assumed to be correct until proven otherwise."

EPO  T 2324/14 -  link

Reasons for the Decision

The decision of the examining division

not to admit the auxiliary request

1. The decision under appeal objected that claim 1 of the main request lacked clarity and sufficient disclosure (see reasons 1-1.1.2 and 2-2.4.2). It then observed that claim 1 of the (first) auxiliary request still contained at least some of the expressions found to be unclear (reasons 3.1) and did not remedy "in any way" the lack of disclosure (reasons 3.2). In view of this, the examining division found that the auxiliary request "prima facie [... did] not overcome the objections under Article 84 EPC and Article 83 EPC", and thus it did not give its consent under Rule 137(3) EPC to the auxiliary request (see reasons 3).

2. Under Rule 137(3) EPC, "No further amendment may be made without the consent of the Examining Division". The examining division therefore had discretion to deny its consent to the auxiliary request.

2.1 Like any other decision open to appeal, the discretionary decision to deny consent to an amendment must be reasoned (Rule 111(2) EPC). In giving reasons for its decision, the examining division acted correctly in this respect, too.

2.2 The EPC does not define what it means for an examining division to give or deny its consent to an amendment under Rule 137(3) EPC.

2.2.1 Conventionally, giving "consent" to an amendment under this provision is equated to "admitting" it. However, the EPC also does not specify what it means for a submission to be "admitted". Admission is mentioned: in Rule 116 EPC, which provides that "New facts and evidence presented [late] need not be considered, unless admitted [...]"; in Article 12(4) RPBA, which states that "Without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which [...] were not admitted in the first instance proceedings, everything presented by the parties under (1) shall be taken into account by the Board [...]"; in Article 13(1) RPBA, which states that "Any amendment to a party's case [...] may be admitted and considered at the Board's discretion"; and in Article 13(3) RPBA, which provides that "Amendments [...] shall not be admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with [...]". Without express mention of admission, Article 114(2) states that "The European Patent Office may disregard facts or evidence [...]" (all emphasis added by the board).

2.2.2 Although these regulations use slightly different words, the board takes the view that they all refer to the same procedural step. A deciding body giving "consent" to a submission "admits" it or "holds it admissible" and cannot "disregard" it, but must, equivalently, "consider" it, "take it into account" and "deal with" it. It follows that a submission which is admitted must be considered fully, whereas a submission which is not admitted must be considered to the extent necessary to justify the non-admission decision, but in other respects its consideration may be limited.

2.3 The EPC also does not define how the examining division should exercise its discretion under Rule 137(3) EPC. The boards of appeal have, however, accepted that the examining division may base its decision to deny consent to an amendment on prima facie considerations and that it may deny its consent to an amendment with prima facie deficiencies.

2.4 A prima facie judgment is one which is made at first sight and is commonly understood to be one assumed to be correct until proven otherwise. Therefore, in making a prima facie judgment, the deciding body concedes that the judgment may not survive further scrutiny and may turn out to be incorrect on further investigation.

2.5 In the present case, the examining division stated that the auxiliary request "prima facie [... did] not overcome the objections" raised against the main request. However, it then indicated which specific objections were not remedied, and the decision leaves no doubt that the examining division found the auxiliary request to be deficient under Articles 83 and 84 EPC with the same degree of conviction as the main request.

2.6 Therefore, the board considers that, contrary to the wording of the decision, the examining division did not limit its examination of the auxiliary request to prima facie considerations. It concludes that the discretionary decision was incorrect even though it was based on right principles (see G 7/93, reasons 2.6). In fact, the examining division considered the auxiliary request fully, since it was able to give sufficient reasons for its conclusion that a patent could not be granted on the basis of the auxiliary request. The examining division thus having considered the auxiliary request fully, the board takes the view that there was no discretion left for the examining division "not to admit" it.

3. As a rule, "everything" presented by the appellant in its statement of grounds of appeal "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 [paragraph] (2)" (see Article 12(4) and 12(1)(a) RPBA). As an exception, Article 12(4) RPBA refers to the board's discretion "to hold inadmissible facts, evidence or requests which [...] were not admitted in the first instance proceedings".

3.1 The board considers that its discretion in this regard requires the non-admission decision of the first instance to be correct.

3.2 This not being the case, the board considers that Article 12(4) RPBA obliges it to take into account the first auxiliary request.

Admission of the second auxiliary request

4. Under Article 13(1) RPBA the board has discretion to "admit[] and consider[]" the second auxiliary request, which it is to "exercise[] in view of inter alia the complexity of the new subject matter submitted" and "the need for procedural economy". Since the second auxiliary request is a reasonable attempt to address the board's clarity objections and does not substantially complicate the case, the second auxiliary request will be considered in this decision.