T 2026/15 - Not admitting or refusing a request?

Key points

• In this examination appeal, the applicant argues that the Board should admit a request, because even though the Examining Division had stated that the request was not admitted under Rule 137(3) EPC,  the ED had in fact considered the request in substance and had rejected it. Therefore, Article 12(4) RPBA does not apply. 
• The Board agrees. " In its decision, the examining division gave extensive reasons why claim 1 of the auxiliary request was unclear []. Only two of these were qualified as merely "prima facie". At least the other, fully reasoned, objections establish in substance why, according to the examining division, a European patent could not be granted on the basis of the auxiliary request. Therefore, the board agrees with the appellant that the examining division has "considered" and "taken into account" the auxiliary request." 
• "The board hence also finds that the examining division implicitly admitted the auxiliary request and, equivalently, gave its consent under Rule 137(3) EPC. In other words, the examining division wrongly exercised its discretion because, having implicitly admitted the request, it no longer had a discretion not to admit it" 
• See also T 2301/12

EPO T 2026/15 - link

1.1 The appellant challenged the non-admission decision, arguing as follows (see the grounds of appeal, page 5, paragraph 1). In "the decision the auxiliary request is discussed in detail, in particular with regard to Article 84 EPC. Hence, it is believed that the auxil­iary request is regarded as introduced during examining and has to be regarded during appeal proceedings." Furthermore, it was requested to "regard the auxiliary request as already admitted to the appeal proceedings".

1.2 In this request the appellant made implicit reference to Articles 12(1) and (4) RPBA and effectively argued that the board had no discretion to "hold inadmissible" the auxiliary request, which was filed with the grounds of appeal, even though it was, on the face of it, not admitted by the examining division. In other words, the appellant argued that the board was obliged to decide on the auxiliary request in substance and could not, instead, limit itself to a formal decision confirming the non-admission decision.

2. The board agrees with the appellant's arguments.

2.1 Article 12(1)(a) and (4) RPBA states inter alia that "everything presented by the" appellant with the grounds of appeal "shall be taken into account by the Board", except that it has "the power [...] to hold inadmissible" in particular requests which were "not admitted in the first instance proceedings". This language implies that that which is "h[e]ld inadmissible" is not "taken into account".

2.2 Rule 137(3) EPC states that "No further amendment may be made without the consent of the Examining Division". Giving or denying "consent" to an amendment according to this rule is conventionally understood as "admitting" or "not admitting" an amended request. This is also the language used by the examining division. Correspondingly, Article 12(4) RPBA is taken to imply that the board has the power to "hold inadmissible" a request involving an amendment to the application to which the examining division has denied its consent under Rule 137(3) EPC.

2.3 The EPC does not expressly define what it means for an examining division to deny its consent to - or not admit - an amendment. It is clear, however, that once having given consent - or admitted - a request, the examining division is obliged to assess its merits in substance. In contrast, a request which is not ad­mitted need not be further examined (or "taken into account" or "considered" as Articles 12(4), 13(1) and (3) RPBA put it). This is also the main reason why examining divisions do "not admit" a request, namely in order to "bring the examination procedure to a close"(see also G 7/93, point 2.5 of the reasons).

2.4 In its decision, the examining division gave extensive reasons why claim 1 of the auxiliary request was unclear, namely two full pages relating to seven separate clarity objections (see pages 8 and 9 of the decision, rea­sons 21-3 to 21.7). Only two of these were qualified as merely "prima facie". At least the other, fully reasoned, objections establish in substance why, according to the examining division, a European patent could not be granted on the basis of the auxiliary request. Therefore, the board agrees with the appellant that the examining division has "considered" and "taken into account" the auxiliary request.

2.5 The board hence also finds that the examining division implicitly admitted the auxiliary request and, equivalently, gave its consent under Rule 137(3) EPC. In other words, the examining division wrongly exercised its discretion because, having implicitly admitted the request, it no longer had a discretion not to admit it (see also T 2324/14, point 2.6 of the reasons).

3. For applicants, and under the EPC, a decision in substance would have the same effect as a non-admission decision for substantive reasons, if it were not for the appeal. No patent is granted on the basis of the request in question.

3.1 Since, however, the boards of appeal may limit themselves to confirming the first instance decision not to admit a request rather than "take[ it] into account", the appellant's position on appeal is worse if the examining division decided not to admit a request than if it had admitted it and decided on its substance.

3.2 If in situations like the one to hand, where it has been determined that a request has a substantive deficiency, the examining division were free to either refuse the request or not to admit it for one and the same reason, it would thus have exclusive control over the appellant's options on appeal. The board considers this to be obviously undesirable (see also T 820/14, reasons 11).

4. The board's discretion under Article 12(4) RPBA assumes that the non-admission decision of the examining division was correct.

4.1 As already mentioned, the board agrees with the appellant that the present non-admission decision was incorrect.

4.2 Since the auxiliary request was filed with the grounds of appeal, Articles 12(1)(a) and 12(4) RPBA oblige the board to consider it in substance.