T 2343/13 - Review of R137(3) decision

Key points

• In this examination appeal, the Board has to decide on the admissibility of an Auxiliary Request which had been refused under Rule 137(3) by the ED.
• " The Examining Division refused to admit the second auxiliary request into the first-instance proceedings under Rule 137(3) EPC in view of the time of its filing [after the oral proceedings] and because it prima facie did not meet the requirements of Article 84 EPC." 
• The ED had hold oral proceedings and had issued a Rule 71(3) Communication based on the 3rd AR. The applicant then disapproved the proposed text, maintained its main request and filed an amended AR-3. The ED then refused the application. 
• The Board: " The question then arises whether the non-acceptance by the appellant of the text proposed by the Examining Division is a factor weighing against admission of the new request. In this respect, the Board notes first that the appellant was fully entitled to maintain its higher-ranking requests and thus to disapprove of the text proposed in the communication under [Rule 71(3) (*)]. And it cannot be held against the appellant that, in the course of the first-instance proceedings, it submitted, as an auxiliary request, a text that was found to meet the requirements of the EPC. If it had not filed that text, the Examining Division would have refused the application at the oral proceedings, and it would have been open to the appellant - within the normal limits of Article 12(4) RPBA - to submit, on appeal, amended requests in reaction to the refusal." 
• The Board considers that G 7/93 (amendments after Rule 71(3) EPC) does not apply. "The situation before the Board now is therefore fundamentally different from that considered in decision G 7/93, provided that the filing of the second auxiliary request is to be regarded as a reaction to the negative opinion expressed by the Examining Division on one of the higher-ranking requests considered in the oral proceedings rather than as an amendment of the claims that had been found allowable at the end of those oral proceedings. This is indeed the case: the second auxiliary request corresponds to the then main request with an amendment that seeks to overcome the Examining Division's inventive-step objection." 
• " As to the Examining Division's second reason for non-admission of the second auxiliary request, namely a prima facie lack of clarity, the Board considers that a question relating directly to the compliance of a request with a provision of substantive patent law is to be assessed by the Board itself and that on such a point there is no latitude for deferring to the view of the department of first instance" 
• * = the Board's decision appears to have a typographic error in the Rule number; see the full decision text below.

EPO T 2343/13 -  link

ECLI:EP:BA:2018:T234313.20180306

Second auxiliary request

7. Admission - Article 12(4) RPBA

7.1 The Examining Division refused to admit the second auxiliary request into the first-instance proceedings under Rule 137(3) EPC in view of the time of its filing and because it prima facie did not meet the requirements of Article 84 EPC.

7.2 Since the request was filed only after the completion of oral proceedings in which the examination proceedings had essentially been brought to a conclusion, in the absence of special circumstances the Examining Division's refusal to admit a newly filed request introducing new features does not amount to an abuse of discretion. Hence, the admission of the second auxiliary request into the proceedings is now at the Board's discretion under Article 12(4) RPBA.

7.3 Although the Board does not find fault with the Examining Division's discretionary decision not to admit the request, it also considers that the non-admission is in itself no reason to treat the second auxiliary request, in respect of its admission under Article 12(4) RPBA, more strictly than if it had been filed for the first time with the statement of grounds of appeal. It would run counter to procedural efficiency if an applicant could increase its chances of having a new request admitted by delaying the filing of that request until after the application has been refused.

7.4 The question then arises whether the non-acceptance by the appellant of the text proposed by the Examining Division is a factor weighing against admission of the new request. In this respect, the Board notes first that the appellant was fully entitled to maintain its higher-ranking requests and thus to disapprove of the text proposed in the communication under Rule 137(3) EPC. And it cannot be held against the appellant that, in the course of the first-instance proceedings, it submitted, as an auxiliary request, a text that was found to meet the requirements of the EPC. If it had not filed that text, the Examining Division would have refused the application at the oral proceedings, and it would have been open to the appellant - within the normal limits of Article 12(4) RPBA - to submit, on appeal, amended requests in reaction to the refusal.

7.5 In decision G 7/93 (OJ EPO 1994, 775), the Enlarged Board of Appeal held that a board of appeal, in the circumstances of the case it had before it, should overrule the discretionary decision of the department of first instance only if the latter had exercised its discretion in an unreasonable way or in accordance with the wrong principles. In that case, the examining division had refused to give consent to an amendment of the claims it had proposed for grant. The question before the referring board then was, essentially, whether to overrule the examining division's discretionary decision and give consent to the amendment or to confirm the examining division's decision and, presumably, allow the applicant to revert to the originally proposed text.

7.6 The situation before the Board now is therefore fundamentally different from that considered in decision G 7/93, provided that the filing of the second auxiliary request is to be regarded as a reaction to the negative opinion expressed by the Examining Division on one of the higher-ranking requests considered in the oral proceedings rather than as an amendment of the claims that had been found allowable at the end of those oral proceedings. This is indeed the case: the second auxiliary request corresponds to the then main request with an amendment that seeks to overcome the Examining Division's inventive-step objection.

7.7 As to the Examining Division's second reason for non-admission of the second auxiliary request, namely a prima facie lack of clarity, the Board considers that a question relating directly to the compliance of a request with a provision of substantive patent law is to be assessed by the Board itself and that on such a point there is no latitude for deferring to the view of the department of first instance (cf. decision T 1816/11 of 22 November 2016, reasons 2.6).

7.8 Since claim 1 includes only a relatively minor amendment of claim 1 of the main request, the Board exercises its discretion under Article 12(4) RPBA and admits the second auxiliary request into the proceedings.