T 1159/13 - Appeal against R137(3) decision

Key points

• This case is an appeal against the refusal of a patent application. The question at issue is whether the auxiliary requests are to be admitted.
• " The reasons for not admitting the first, second and third auxiliary requests under Rule 137(3) EPC are given only in the "Facts and submissions" section of the written decision and not in the "Reasons for the decision" section. This possibly reflects an erroneous assumption by the examining division that the non-admission of a request is not part of the appealable decision. Nevertheless, reasons were given." 
• The Board "since the examining division's reasons for non-admission of the first, second and third auxiliary requests are based exclusively on considerations relating directly to the compliance of the requests with a provision of substantive patent law, in the present case the board is in no way bound by the non-admission of these requests (see decisions T 1816/11, reasons 2.6; T 2343/13, reasons 7.7). Otherwise, the appellant would be deprived of a full judicial review of the examining division's assessment of substantive aspects of the case. The board therefore admits the (amended) first, second and third auxiliary requests into the appeal proceedings under Article 12(4) RPBA." 

EPO T 1159/13 - link

ECLI:EP:BA:2019:T115913.20190417

5. Admission into the appeal proceedings

5.1 The reasons for not admitting the first, second and third auxiliary requests under Rule 137(3) EPC are given only in the "Facts and submissions" section of the written decision and not in the "Reasons for the decision" section. This possibly reflects an erroneous assumption by the examining division that the non-admission of a request is not part of the appealable decision. Nevertheless, reasons were given.

5.2 The appellant argued that the examining division had incorrectly refused to admit the first, second and third auxiliary requests into the proceedings. The examining division had failed to take account of the guidance given in Guidelines for Examination, H-II, 2.3, which stated that the examiner should bear in mind the length of the proceedings to date and whether the applicant had already had sufficient opportunity to make amendments.

5.3 The examining division essentially argued that the first, second and third auxiliary requests did not overcome the inventive-step objection raised against the main request. That argument would have sufficed to conclude that the requests would not be allowable if they had been admitted, and it is independent of the length of the proceedings and of whether the appellant had already had sufficient opportunity for making amendments. This is therefore not a case where the examining division effectively cut short the appellant's attempts to claim allowable subject-matter. Since the applicability of Rule 137(3) EPC is not limited to late-filed amendments, the non-admission of the first, second and third auxiliary requests was not an abuse of discretion (see decision T 1816/11, reasons 2.5).

5.4 At the same time, since the examining division's reasons for non-admission of the first, second and third auxiliary requests are based exclusively on considerations relating directly to the compliance of the requests with a provision of substantive patent law, in the present case the board is in no way bound by the non-admission of these requests (see decisions T 1816/11, reasons 2.6; T 2343/13, reasons 7.7). Otherwise, the appellant would be deprived of a full judicial review of the examining division's assessment of substantive aspects of the case. The board therefore admits the (amended) first, second and third auxiliary requests into the appeal proceedings under Article 12(4) RPBA.