T 0416/19 - Rule 137(5)

Key points

•  The applicant appealed the decision to refuse the application.
• "The decision under appeal was based on the grounds that the main request was not admitted into the proceedings under Rule 137(5) EPC and the subject-matter of claim 1 of the auxiliary request did not involve an inventive step within the meaning of Article 56 EPC."
• "This board endorses the view expressed in T 2431/19, points 2.2 and 2.3 that Rule 137(5) EPC does not provide a legal basis for the exercise of discretion, i.e. for not admitting the amended set of claims into the proceedings."
• ", the examining division based its objection on the fact that amended claim 1 added the feature of displaying a timeline (see decision under appeal, point 14.3). This board endorses the view taken in T 1866/15, points 3.8 and 3.13 that there cannot be a lack of unity between two claims where one limits the subject-matter of the other."
• "Hence, if claim 1 of the second auxiliary request had been present in the set of claims on file at the time of the search, no objection of lack of unity would have been raised."
• " the board finds that the decision of the examining division not to admit the second auxiliary request under Rule 137(5) EPC was not justified."
• However, after some analysis, " the board finds that the subject-matter of claim 1 of the second auxiliary request does not involve an inventive step within the meaning of Article 56 EPC."

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t190416eu1.html

5. Revision of the objection raised against the second auxiliary request (Rule 137(5) EPC)

5.1 According to the decision under appeal, the second auxiliary request (which at the time was the main request) was not admitted into the proceedings under Rule 137(5) EPC (see decision under appeal, point 14.4).

This board endorses the view expressed in T 2431/19, points 2.2 and 2.3 that Rule 137(5) EPC does not provide a legal basis for the exercise of discretion, i.e. for not admitting the amended set of claims into the proceedings.

5.2 Moreover, the examining division based its objection on the fact that amended claim 1 added the feature of displaying a timeline (see decision under appeal, point 14.3). This board endorses the view taken in T 1866/15, points 3.8 and 3.13 that there cannot be a lack of unity between two claims where one limits the subject-matter of the other.

Hence, if claim 1 of the second auxiliary request had been present in the set of claims on file at the time of the search, no objection of lack of unity would have been raised.

5.3 Therefore, the board finds that the decision of the examining division not to admit the second auxiliary request under Rule 137(5) EPC was not justified.