T 1101/20 - Appeal against refusal with allowable auxiliary request

Key points

• The Statement of grounds in this examination appeal was filed 09.03.2020. The facts of the case reflect a rather standard examination procedure and a rather standard review in appeal. The twist is the effect of the RPBA 2020, or in fact that Art. 12(6) RPBA is discussed by the Board though it appears to be a relevant provision for the case at hand.
• “At the examination oral proceedings the examining division informed the appellant that the main request did not meet the requirements of Articles 84 and 83 EPC and that it intended to grant a patent based on the auxiliary request 1 filed during the oral proceedings. In response to the communication under Rule 71(3) EPC the appellant did not approve the text intended for grant and explicitly requested to grant a patent based on the main request as filed on 21 January 2019 and discussed at the examination oral proceedings.”
• The refusal decision is then issued for the main request. 
• “The Board notes that the main request and the auxiliary request 1 filed with the grounds of appeal have been withdrawn during the oral proceedings [before the Board] and that the only request maintained by the appellant as new main request, namely the auxiliary request 2 filed with the grounds of appeal, corresponds to the auxiliary request 1 discussed at the examining oral proceedings and deemed to be allowable by the examining division.”
• “the Board does not see any reason for interfering with the assessment of the examining division leading to the communication according to Rule 71(3) EPC informing the appellant of its intention to grant an European patent on the basis of the auxiliary request 1 filed at the oral proceedings, and therefore considers it appropriate to remit the case to the first instance with the order to grant a patent in the form already considered allowable by the examining division.”
• As a comment,  note that said AR-2 was effectively withdrawn in response to the Rule 71(3) Communication. Thereby, the request falls under Art. 12(6) RPBA 2020, second sentence, second clause (“requests ... which were no longer maintained, in the proceedings leading to the decision under appeal”) so that the Board “shall not admit it ... unless the circumstances of the appeal case justify their admittance”. The Board in the present case does discuss Art. 12(6)(s.2).  
• Clearly, the result of the present decision is the only correct one, but it is not entirely straightforward to subsume it under the text of Art. 12(6)(s.2).

EPO  T 1101/20

Link to the decision after the jump, as well as an extract of the decision text.

https://www.epo.org/law-practice/case-law-appeals/recent/t201101eu1.html

Summary of Facts and Submissions

I. The appeal was filed by the appellant (applicant) against the decision of the examining division to refuse the patent application in suit.

II. At the examination oral proceedings the examining division informed the appellant that the main request did not meet the requirements of Articles 84 and 83 EPC and that it intended to grant a patent based on the auxiliary request 1 filed during the oral proceedings.

In response to the communication under Rule 71(3) EPC the appellant did not approve the text intended for grant and explicitly requested to grant a patent based on the main request as filed on 21 January 2019 and discussed at the examination oral proceedings.

In the decision under appeal the examining division held that the subject-matter of the dependent claims 2 to 8 and 11 to 15 of the main request was not clear in the meaning of Article 84 EPC and that the requirements of Article 83 EPC were not met.

III. With the communication according to Rule 100(2) EPC dated 15 June 2020 the Board informed the appellant of its preliminary assessment of the case.

Oral proceedings pursuant to Article 116 EPC were held before the Board on 01 December 2021 by videoconference.

IV. The appellant requested that the decision under appeal be set aside and that an European patent be granted on the basis of the auxiliary request 2 (now main request), the latest corresponding to the auxiliary request 1 considered allowable by the examining division at the examination oral proceedings.

Reasons for the Decision

1. The Board notes that the main request and the auxiliary request 1 filed with the grounds of appeal have been withdrawn during the oral proceedings (see minutes, page 2, second paragraph) and that the only request maintained by the appellant as new main request, namely the auxiliary request 2 filed with the grounds of appeal, corresponds to the auxiliary request 1 discussed at the examining oral proceedings and deemed to be allowable by the examining division.

2. As announced by the Chairman during the oral proceedings, the Board does not see any reason for interfering with the assessment of the examining division leading to the communication according to Rule 71(3) EPC informing the appellant of its intention to grant an European patent on the basis of the auxiliary request 1 filed at the oral proceedings, and therefore considers it appropriate to remit the case to the first instance with the order to grant a patent in the form already considered allowable by the examining division.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the examining division with the order to grant a patent with the documents specified in the communication under Rule 71(3) EPC dated 5 April 2019 in respect to auxiliary request 1.