T 1176/13 - Need to refute inadmissibility

Key points

• In this examination appeal, the ED had held a number of auxiliary requests inadmissible under Rule 137(3) EPC, because they were filed shortly before the oral proceedings and were not clearly allowable. With the Notice of appeal, the applicant argued that the claims of these request were novel etc., but "did not [] give any reasons why the board should set aside the examining division's discretionary decision under Rule 137(3) EPC not to admit these requests".
• " Following T 573/09 [], since it was neither immediately apparent to the board upon reading the decision under appeal and the statement of grounds of appeal nor argued by the appellant at any point that the examining division exercised its discretion in an unreasonable way or based it on the wrong principles, the board saw no reason to overrule the way in which the examining division had exercised its discretion." 

EPO T 1176/13 -  link

2. First to fourth auxiliary requests: admissibility (Article 12(2) and (4) RPBA)

2.1 Claims 1 of the first to fourth auxiliary requests are identical to claims 1 of auxiliary requests 1 to 4, respectively, as submitted during the examination proceedings. Auxiliary requests 1 to 3 had been late filed, i.e. two days before the oral proceedings before the examining division, and auxiliary request 4 had been filed one month before these oral proceedings. The examining division did not admit these requests into the proceedings under Rule 137(3) EPC, []

2.3 In the present case, as already pointed out in the board's communication annexed to the summons to oral proceedings, in the statement of grounds of appeal the appellant did not, contrary to the requirements of Article 12(2) RPBA, give any reasons why the board should set aside the examining division's discretionary decision under Rule 137(3) EPC not to admit these requests. The statement of grounds of appeal contained arguments only as to why the subject-matter of the claims of the main request and the first, second and fourth auxiliary requests was novel, claim 1 of the first auxiliary request complied with Article 123(2) EPC and the independent claims of the third auxiliary request met the requirements of Article 84 EPC.

Nor did the appellant in its reply to the board's communication comment on the issue of admissibility of the first to fourth auxiliary requests as raised in this communication.

Following T 573/09 (see point 2 of the reasons), since it was neither immediately apparent to the board upon reading the decision under appeal and the statement of grounds of appeal nor argued by the appellant at any point that the examining division exercised its discretion in an unreasonable way or based it on the wrong principles, the board saw no reason to overrule the way in which the examining division had exercised its discretion.

Further, the board, exercising its own discretion under Article 12(4) RPBA (cf. T 0556/13, points 2.1.5 to 2.1.7) saw no reason to not hold the first to fourth auxiliary requests inadmissible.

2.4 The board therefore decided to hold the first to fourth auxiliary requests inadmissible.