T 1421/20 - Fast decision, first level of convergence

 Key points

• An appeal against a refusal decision. Statement of grounds filed 21.04.2020, forwarded to the Board under Art. 109 on about 21.06. Summons 23.06, preliminary opinion 26.06. Oral proceedings 02.11.2020, appeal dismissed (application filed already on 22.10.2003, on the other hand, so the EPO still needed 17 years to finally refuse it). 
• This is the first decision I know wherein the new 'first level of convergence' is applied, i.e. Article 12(4) RPBA 2020.
• “although the amendments carried out in the Auxiliary Requests 0a, 0b and 0c [filed with the Statement of grounds] may address the [clarity] objections raised by the examining division in the decision under appeal, they introduce new [clarity] issues that lead to new objections. Therefore, the board, exercising its discretion under Articles 12(2) and (4) RPBA 2020, decides not to admit the Auxiliary Requests 0a, 0b and 0c into the procedure.”
• The Board does not need to discuss whether these AR's should have been filed during the first instance proceedings. I guess that if the clarity objections of the Examining Division were first raised in the appealed decision, this would be an error under Article 113 EPC, but that would be something for the applicant to argue.
• The Board analyses the new clarity issues in detail in the appeal decision.
• Note that the requirement of “does not give rise to new objections” is in the second stage of convergence, Art.13(1)(s.4), clause (v)(b).
• The Board finds that Auxiliary Request 0a' and AR12 are not novel. The other requests are not admitted.
  
  
• “Auxiliary Requests 0b', 0b'-1 and 0c' [...] were filed with appellant's letter of 1 October 2020, i. e. after the board had issued summons to oral proceedings. They were incontestably late filed and constituted an amendment to the appellant's case. The appellant argued that these requests should exceptionally be admitted into proceedings because it could not predict that board would regard clear the feature that the examining division had considered not clear.”
• The Board does not admit them. “the board considers that the appellant could and should have filed these requests during the first instance proceedings. Moreover, the board regards that it could not deal with requests comprising such features without undue burden, since it was not even certain that appropriate prior art was readily available in the file”
  
  
• Perhaps even more relevant is the fate of AR1-5. “Although it is true that Auxiliary Requests 1 to 5 were underlying the decision under appeal, it is also true that they were replaced (i. e. withdrawn) in the beginning of the appeal and were, thus, not part of the appellant's case. The board regards, thus, their reintroduction with the appellant's letter of 1 October 2020 as an amendment to the appellant's case, which is to be admitted into the procedure under Article 13 RPBA 2020.The board notes further, that the examining division had rejected these requests for lack of clarity and no other opinion on them was given in the decision under appeal with respect to the other patentability requirements. Since the board did not agree with the lack of clarity objections of the examining division, these requests had to be assessed with respect to the other patentability requirements according to the EPC. Moreover, by replacing them in the beginning of the appeal, the appellant did not give the board the chance to examine them and form at least a preliminary opinion on them.” The Board is not prepared to examine novelty and inventive step, neither to remit the case, and does not admit these requests.
• Finally, AR-6 to 11 were held inadmissible by the Examining Division under Rule 137(3) EPC as being late-filed and prima facie unclear. The appellant does not contest this decision and the Board does not admit the requests on appeal.

T 1421/20 - link