T 0183/17 - Rule 116(2) EPC and absence at oral proceedings

Key points

• In this examination appeal, the applicant had filed a new Main Request one day before oral proceedings before the ED. The ED did not admit the request as not clearly allowable. The Board reviews this decision (as part of their discretionary decision under Article 12(4) RPBA to (not) admit the request in appeal). 
• The appellant also argued that when considering whether or not the amendments to the claims were "clearly allowable", it was not necessary for the amendments to resolve all minor issues. "These arguments [are] not persuasive because even if the examining division had been able to recognise the defects as being "minor", which is questionable, the fact that the applicant had chosen not to attend the oral proceedings meant that it would have involved a substantial procedural delay had the examining division postponed the oral proceedings to give the applicant an opportunity to remedy them. "
• As a comment, it does not seem very elegant to make the later absence at the oral proceedings a factor for admissibility of requests. In my opinion, admissibility of request must be decided on the basis of the state of the file at the date they are filed. Either the request is not admitted as not "clearly allowable", or the request is admitted and not allowed because of the minor issues. 
• Moreover, the Guidelines H-II 2.7.1. state that "clear allowability" means that "it must be immediately apparent to the examining division that the amendments successfully address the issues raised without giving rise to new ones". 

EPO T 0183/17 -  link

Reasons for the Decision

1. According to Article 114(2) EPC the EPO may disregard facts or evidence not filed in due time and according to Rule 116(2) EPC taken together with the third and fourth sentences of Rule 116(1) EPC to which it refers, new application documents (i.e. in the present case new sets of claims) which are presented after the final date fixed for making written submissions in preparation for oral proceedings need not be considered, unless they are admitted on the grounds that the subject of the proceedings has changed.

2. In the present case, the new main and three auxiliary requests were filed before the examining division on 27 June 2016 [one day before the oral proceedings of 28 June 2016 that the applicant did not attend], which was after the final date that had been fixed for making written submissions in preparation for oral proceedings. In considering whether the amendments were admissible under Rule 116(1) [and (2)] and Article 114(2) EPC, the examining division referred to Guidelines H-II, 2.7.1 and applied the principle that they should first consider whether the late-filed requests were allowable on a prima facie basis (see reasons for the decision, section I). The examining division applied this principle to each of the new requests and found that in each case the amendment was "clearly not allowable under Article 123(2) EPC" (see the conclusions reached at the end of each of the sub-sections A to D of section I of the reasons for the decision). In view of these findings the examining division exercised their discretion regarding these late-filed submissions and did not admit the main and three auxiliary requests filed on 27 June 2016.

3. On appeal the appellant has re-submitted the main and three auxiliary requests which were not admitted by the examining division.

4. According to Article 12(4) RPBA, the Board has the power to hold inadmissible requests which were not admitted in the first instance proceedings.

5. The case law regarding late submissions in general, independent of the preparation of oral proceedings governed by Rule 116 EPC, is summarised in the Case Law of the Boards of Appeal, Eighth Edition, section IV.E.4.3.3(a) under the headings "Filing of amended claims in appeal proceedings", "Ex parte appeal procedure", "Admission of requests already refused by the examining division".

There it is stated that it is the established jurisprudence of the boards of appeal that the power of the examining division to consent to amendments under Rule 137(3) EPC is a discretionary power. According to G 7/93 (OJ 1994, 775) the way in which the examining division should exercise its discretion to allow an amendment of an application must depend upon the circumstances of each individual case, and must also depend upon the stage of the pre-grant procedure which the application has reached. A board of appeal should only overrule the way in which a department of first instance has exercised its discretion if it comes to the conclusion either that the department of first instance, in its decision, has not exercised its discretion in accordance with the right principles or that it has exercised its discretion in an unreasonable way. The exercise of a discretionary power has to strike a balance between, in particular, the applicant's interest in obtaining adequate protection for his invention and the EPO's interest in bringing the examination to a close in an effective and speedy way. Moreover, the exercise of a discretionary power has to be reasoned, otherwise it would be arbitrary (T 246/08).

These considerations apply also when a board of appeal has to review the way in which an examining division has exercised its discretion under Rule 116(1) and (2) EPC in respect of the admission of amendments filed after the final date fixed for making written submissions in preparation for oral proceedings (see the last paragraph of the Case Law, section III.C.4.4).

6. In the present case the examining division applied the criterion of "clear allowability" set out in the Guidelines for Examination, H-II, 2.7.1, which is undoubtedly the right principle to have applied. Furthermore, when applying that criterion they gave an appropriate level of reasoning for the conclusion they reached, even if the conclusion under the "clear allowability" criterion should perhaps have been that the amendments were "not clearly allowable", rather than that they were "clearly not allowable".

7. The appellant argued that in coming to their conclusion the examining division had exercised their discretion unjustly because they had not taken into account that the expression "cable connection" in claim 1 was broad and could be construed either as being the "docking contact point" of the adaptor, as in claim 14, or as being some other unspecified connection. The Board considered these arguments to be of no relevance to the question at issue of whether the examining division had exercised their discretion in accordance with the right principles or had exercised their discretion in an unreasonable way.

8. The appellant also argued that when considering whether or not the amendments to the claims were "clearly allowable", it was not necessary for the amendments to resolve all minor issues. In the appellant's view it was sufficient that the main claims as amended provided a promising starting point and small issues of added subject-matter in a dependent claim, for example, could have been resolved after agreement had been reached on the main claims. These arguments were not persuasive because even if the examining division had been able to recognise the defects as being "minor", which is questionable, the fact that the applicant had chosen not to attend the oral proceedings meant that it would have involved a substantial procedural delay had the examining division postponed the oral proceedings to give the applicant an opportunity to remedy them. This would not have been in accordance with the need for procedural economy.

9. Taking all of these considerations into account the Board of Appeal came to the conclusion that they should not overrule the way in which the examining division exercised its discretion in this case and held the main and the three auxiliary requests that were re-filed on appeal to be inadmissible using the discretionary power afforded by Article 12(4) RPBA.

10. In the absence of an admissible request the appeal had to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.