T 0403/14 - Should have been filed before the Examining Division

Key points

• A case of a Board holding a request inadmissible which was filed in an appeal against a refusal with the Statement of grounds, under the 'should have been filed' prong of Article 12(4) RPBA 2007.
• “If the board were to admit the first auxiliary request into the proceedings, it would be forced either (1) to examine and decide on subject-matter which has probably not been searched or (2) to remit the case to the examining division in order to enable a search to be performed. The board concurs with the view []  that neither of these procedural options is appropriate and acceptable. If the appellant intended to seek protection for the subject-matter of claim 1 of the present first auxiliary request, it should have presented this request before the examining division, for instance as a further auxiliary request. The appellant had several opportunities to do so because the subject-matter of claim 1 was already objected to - for lack of novelty or lack of inventive step over D1 - in several communications of the examining division.”

EPO T 0403/14 - link

6. Conclusion on the main request

Since claim 1 of the main request does not meet the requirement of clarity of Article 84 EPC 1973, the main request is not allowable.

First auxiliary request - admittance (Article 12(4) RPBA)

7. Pursuant to Article 12(4) RPBA (Rules of Procedure of the Boards of Appeal, OJ EPO 2007, 536), the board has the power to hold inadmissible a request which could have been presented in the first-instance proceedings but was not (see Case Law of the Boards of Appeal of the EPO, 8th edition 2016, IV.E.4.3.1 in general and IV.E.4.3.3 b) for ex parte appeal proceedings).

8. Claim 1 according to the first auxiliary request has been amended with respect to claim 1 of the main request by adding several features taken from the description and specific to the fourth embodiment shown in figures 13 to 15.

9. The appellant has not disputed that these additional features are derived solely from the description and drawings of the application as filed. The appellant confirmed that they had no equivalent in the original claims and were not included in any set of claims submitted before the examining division. The board thus sees no reason to assume that these features have been the subject of a search.

10. If the board were to admit the first auxiliary request into the proceedings, it would be forced either (1) to examine and decide on subject-matter which has probably not been searched or (2) to remit the case to the examining division in order to enable a search to be performed. The board concurs with the view taken in similar situations by other boards of appeal in decisions T 1212/08 (see section 4 of the Reasons), T 1108/10 (see section 3.2 of the Reasons) and T 892/11 (see section 2 of the Reasons)(see also Case Law of the Boards of Appeal of the European Patent Office, 8th edition 2016, IV.E.4.3.3.b) that neither of these procedural options is appropriate and acceptable. If the appellant intended to seek protection for the subject-matter of claim 1 of the present first auxiliary request, it should have presented this request before the examining division, for instance as a further auxiliary request. The appellant had several opportunities to do so because the subject-matter of claim 1 was already objected to - for lack of novelty or lack of inventive step over D1 - in several communications of the examining division.

11. The appellant's arguments may be summarised as follows:

The examining division introduced new documents and arguments shortly before the oral proceedings took place. The period of time in question was far short of the period that befits a communication from the examining division raising matters of substance (four months) - EPO Guidelines, E, VIII, 1.2 (version of November 2018).

The applicant therefore had very little opportunity to fully consider the examining division's position and to respond accordingly.

Moreover, it was "clearly not feasible for the applicant to pursue every feasible amendment at oral proceedings". The examining division proceeded to oral proceedings as soon as was legally permitted, thereby limiting the applicant's opportunity to pursue different arguments and amendments. Accordingly, it was not accurate to say that the applicant could have presented such an amendment at first instance.

12. The board does not find these arguments persuasive for the following reasons:

12.1 On four different occasions, the appellant filed one or more sets of amended claims in the first-instance proceedings:

- with a letter dated 13 June 2012 filed in reply to the extended European search report (Rule 62 EPC);

- with a letter dated 3 September 2012 filed in reply to the examining division's first communication pursuant to Article 94(3) EPC;

- with a letter dated 25 April 2013 filed in reply to the examining division's communication annexed to the summons to oral proceedings; and

- during the oral proceedings held on 25 September 2013.

Prior to each of these four occasions, the examining division had objected that the subject-matter of claim 1 lacked novelty over D1 or did not involve an inventive step when starting from D1.

The board thus notes that the applicant had many occasions to file amended claims in the first-instance proceedings.

12.2 In a brief communication dispatched on 1 July 2013, i.e. nearly three months before the date of the oral proceedings held on 25 September 2013, the examining division introduced prior-art documents D4 and D5 as evidence of common general knowledge.

Hence, contrary to the appellant's argument, the applicant had sufficient time after reception of the brief communication to study prior-art documents D4 and D5 and to file amended claims before or during the oral proceedings.

13. For the above reasons, the board concludes that, if the applicant considered it necessary to seek protection for the subject-matter of claim 1 of the present first auxiliary request in order to patentably distinguish its claimed invention from D1, it should have filed this request before the examining division, for instance, as a further auxiliary request, and it had several occasions to do so.

Already for the above reasons, the board considers that the first auxiliary request should not be admitted into the proceedings, pursuant to Article 12(4) RPBA.

Moreover, the fact that the subject-matter of claim 1 of the present first auxiliary request was likely not searched (see points 9 and 10 supra) provides an additional reason why the board should not admit this request into the appeal proceedings.

14. For the above reasons, the board has decided, pursuant to Article 12(4) RPBA, not to admit the appellant's first auxiliary request into the proceedings.