T 1757/20 - Discretion under Rule 137(3)

Key points

• Oral proceedings before the Examining Division were held on 15.01.2020.
•  "The second and third auxiliary requests, both filed on 13 December 2019 as tenth and eleventh auxiliary requests, and then renumbered, were not ad­mitted by the examining division in the proceedings under Rule 137(3) EPC, because they defined the subject-matter in terms of the result to be achieved, see item 21.1 of the impugned decision. The examining division referred to its communication dated 21 November 2019, section 1.1.3, but did not cite any legal provisions which were not met, such as Article 84 EPC."
• "The requests were filed on 13 December 2019 within the time limit set out on the cover page of the summons to oral proceedings issued on 2 December 2019 and were therefore filed on time. These oral procee­dings were a postponement of previous oral proceedings which had set another time limit. The examining division apparently wanted to maintain the original deadline by writing in the summons the phrase "As the change of date is not substantial, the applicant and/or their representative should realise that the date set for submissions prior to the oral proceedings remains the same". However, the message communicated to the appellant was contradictory and unclear."
• "3.5 In a telephone conversation, see protocol of 15 January 2020, item 2, the examining division expressed the view that these requests were late-filed, not converging and prima facie did not overcome the objections raised in regard of defining the subject-matter in terms of the result to be achieved, with reference to a previous communication dated 21 November 2018, section 1.1.3.

  3.6 During oral proceedings, according to the minutes, the examining division maintained its previous position in regard to the late filing of these requests without a proper explanation why it considered the arguments of the then applicant not convincing.

•  In the decision, section 21.1, the examining division seems to have completely changed its mind. There is no reference to prima facie non-compliance, because of a alleged late-filing. It would seem that the examining division became aware that it was mistaken to consider these requests as late-filed. Such a mistake could have been easily avoided if the arguments of the then applicant would have been properly assessed and discussed during oral proceedings. As a consequence the examining division applied the wrong legal principle."

• "3.9 During oral proceedings, according to the protocol, the examining division considered these requests still not converging and prima facie not allowable under Article 56 EPC. The examining division seems to have abandoned its previous position that they were late filed.

•  In the decision, section 21.1, the examining division seems to have again changed its mind. The reasons for not allowing the two requests was not Article 56 EPC, as discussed during oral proceedings, but that the subject-matter of these requests is defined in terms of a result to be achieved."

• "It is not apparent from the contested decision that the examining division took all relevant factors of the examination procedure into account when exercising its discretion under Rule 137(3) EPC not to admit the requests into the proceedings. The appellant was rather confronted with alternating objections, without proper reasoning. The discretionary decision of the examining division is not fully reasoned and justified. "

EPO 

The link to the decision and an extract of it can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t201757eu1

3. Second and further auxiliary requests

3.1 The second and third auxiliary requests, both filed on 13 December 2019 as tenth and eleventh auxiliary requests, and then renumbered, were not ad­mitted by the examining division in the proceedings under Rule 137(3) EPC, because they defined the subject-matter in terms of the result to be achieved, see item 21.1 of the impugned decision. The examining division referred to its communication dated 21 November 2019, section 1.1.3, but did not cite any legal provisions which were not met, such as Article 84 EPC.

3.2 The appellant argued that the requests were not admitted for reasons upon which he had no adequate opportunity to express its arguments contrary to Article 113 EPC and requests the reimbursement of the appeal fee.

3.3 The Board agrees with the appellant that a substantial procedural violation occurred, see below.

Late-filing

3.4 The requests were filed on 13 December 2019 within the time limit set out on the cover page of the summons to oral proceedings issued on 2 December 2019 and were therefore filed on time. These oral procee­dings were a postponement of previous oral proceedings which had set another time limit. The examining division apparently wanted to maintain the original deadline by writing in the summons the phrase "As the change of date is not substantial, the applicant and/or their representative should realise that the date set for submissions prior to the oral proceedings remains the same". However, the message communicated to the appellant was contradictory and unclear.

3.5 In a telephone conversation, see protocol of 15 January 2020, item 2, the examining division expressed the view that these requests were late-filed, not converging and prima facie did not overcome the objections raised in regard of defining the subject-matter in terms of the result to be achieved, with reference to a previous communication dated 21 November 2018, section 1.1.3.

3.6 During oral proceedings, according to the minutes, the examining division maintained its previous position in regard to the late filing of these requests without a proper explanation why it considered the arguments of the then applicant not convincing.

3.7 In the decision, section 21.1, the examining division seems to have completely changed its mind. There is no reference to prima facie non-compliance, because of a alleged late-filing. It would seem that the examining division became aware that it was mistaken to consider these requests as late-filed. Such a mistake could have been easily avoided if the arguments of the then applicant would have been properly assessed and discussed during oral proceedings. As a consequence the examining division applied the wrong legal principle.

Reasons for non-allowability

The reasons given in the decision refer back to the protocol of a telephone conversation dated 21 November 2019 in which the examining division explained its position and mentioned in section 1.1.3 that the computation of feedback data to improve the manufacturing and the design of containers is defined in terms of the result to be achieved. No legal provision is cited. Article 56 EPC is not mentioned.

3.9 During oral proceedings, according to the protocol, the examining division considered these requests still not converging and prima facie not allowable under Article 56 EPC. The examining division seems to have abandoned its previous position that they were late filed.

3.10 In the decision, section 21.1, the examining division seems to have again changed its mind. The reasons for not allowing the two requests was not Article 56 EPC, as discussed during oral proceedings, but that the subject-matter of these requests is defined in terms of a result to be achieved.

3.11 It is not apparent from the contested decision that the examining division took all relevant factors of the examination procedure into account when exercising its discretion under Rule 137(3) EPC not to admit the requests into the proceedings. The appellant was rather confronted with alternating objections, without proper reasoning. The discretionary decision of the examining division is not fully reasoned and justified.

3.12 An examining division has to take all relevant factors into account when exercising its discretion under Rule 137(3) EPC, see T 1045/18, reasons, point 4. Prima facie allowability is at most one criterion for the admissibility of late-filed amendments which does not apply in the present case. Moreover, discretionary decisions should not be taken arbitrarily and - like all decisions open to appeal - need to be substantia­ted, see T 309/09, reasons, points 6.1 and 6.3.

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 for further prosecution.

3. The request for the reimbursement of the appeal fee is allowed.