T 2431/19 - Rule 137(5) is not discretionary

 Key points

• The Examining Division held amended claims inadmissible under Rule 137(5) EPC, second sentence.
• “The board is aware that the Guidelines for Examination in the EPO uses terminology relating to "admittance" in connection with Rule 137(5) EPC (see, for instance, the applicable edition of November 2018, F-IV, 3.3, fourth paragraph: "such amendments may not be admitted"; H-II, 6.2, third paragraph: "such amendments are not admissible"). Moreover, some decisions (e.g. T 789/07 []) apparently endorse the reliance on Rule 137(5) EPC regarding a discretionary decision in first-instance proceedings on admittance of a claim request into the proceedings [note: also recent decision T0390/18]. 
• However, the board holds that Rule 137(5) EPC, as opposed to Rule 137(3) EPC, does not confer any discretionary power to the examining division for the reasons set out below” [analysis omitted]
• “ the question whether a patent application is refused on the grounds that a sole claim request is not admitted into the examination proceedings or is not held allowable under Rule 137(5) EPC does not constitute merely a trifle or an academic issue. The difference between such an assessment in full and in a prima facie way in the context of admittance is that the latter does not extend beyond what is necessary to justify the non-admittance decision (see T 2324/14, Reasons 2.2.2). Furthermore, such "[a] prima facie judgment is one which is made at first sight and is commonly understood to be one assumed to be correct until proven otherwise" so that it "may not survive further scrutiny and may turn out to be incorrect on further investigation" (cf. T 2324/14, Reasons 2.4). Thus, it can indeed be decisive for the outcome of a case whether a claim set is examined only in a prima facie way or in full.”
• There is also a critical difference with respect to Art. 12(6) first sentence RPBA 2020.
• “ In the present case, the examining division took a decision on the admittance of the claim request and based this decision exclusively on Rule 137(5), second sentence, EPC, i.e. without reference to Rule 137(3) EPC in conjunction with the well-established criterion of "clear allowability". However, relying exclusively on Rule 137(5) EPC would have required the examining division to examine compliance with that provision in full, not only in a prima facie way in the context of an admittance decision. Alternatively, the examining division could have relied on Rule 137(3) EPC as a legal basis for exercising discretion in the context of an admittance decision. Having done neither, the examining decision exercised discretion on the basis of a Rule - i.e. Rule 137(5) EPC - which does not confer any discretion”
  
  
• The Board also gives a valuable analysis of Rule 63 EPC. However, the case is a bit unusual because the search division had actually searched all claims while at the same time stating that the search was restricted under Rule 63 EPC. Another aspect that makes the case atypical is that, in the end, according to the Board “the network manager of present [i.e. amended] claim 1 must be the same as the network manager of original claim 1. Since the search division apparently included original claim 1 in their search [], the results of this search must be relevant for present claim 1 as well.” So according to the Board, amended claim 1 was in effect searched. 
• 
  
• The Search Division had limited the search under Rule 63 EPC: “ the search division had indicated that "the application has, de facto, no technical feature" because the verbs in the description as a whole "are always used in conjunction with the word 'may'"”
• As a comment, I think the Examining Division actually should have invoked Rule 137(5) first sentence, which deals with taking features from the description, as was done with the amendment in the present case. The requirements for holding the amendments inadmissible under Rule 137(5) first sentence are not fulfilled if the amended claim specifies the same subject-matter as original claim 1, as the Board found, but that is a distinct issue. 
• The Board finds the restriction of the search under Rule 63(1) to be invalid: “A prerequisite under Rule 63(1) EPC is that it must be "impossible to carry out a meaningful search regarding the state of the art on the basis of all or some of the subject-matter claimed" (emphasis added). In the current case, this prerequisite was not met, given that the search was carried out by the search division with regard to all of the original claims. ”
  
  
• “Given that a search division's decision to restrict the search is not subject to appeal and thus cannot be overturned (cf. T 1895/13, Reasons 3, last paragraph), it must be assessed whether the examining division, being of the opinion that present claim 1 comprises amendments relating to unsearched subject-matter (cf. points 3.3.3 and 3.3.4 below), should have conducted an "additional search" (see e.g. T 1873/06 [...])”
• As a comment, I think the Board here tacitly applies the rule that the second sentence of Rule 137(5) must be understood as: “Nor may they relate to subject-matter not searched in accordance with a correct application of Rule 62a or Rule 63”. 
  
  
• The Board: “it should be emphasised first that the expression "subject-matter not searched in accordance with Rule 62a or Rule 63" of [Rule 137(5)(s.2)]  must necessarily relate to claimed subject-matter (see in this respect the term "subject-matter claimed" in Rule 63(1) and (2) EPC as well as the requirement in Rule 63(3) EPC to restrict the claims to the subject-matter searched; emphasis added). While present claim 1 may somehow relate to unsearched subject-matter per se, such unsearched subject-matter was not part of the claimed subject-matter (cf. point 3.3.8 above). Hence, present claim 1 cannot relate to subject-matter not searched within the meaning of Rule 137(5), second sentence, EPC.”
• I note that Rule 137(5) first sentence deals with switching to different inventions from the description after the search phase.

Headnote
Rule 137(5) EPC provides for a mandatory requirement that amended claims must fulfil to be allowable. Relating to substantive law rather than to procedural law, Rule 137(5) EPC does not provide a legal basis for the exercise of discretion. The non-admittance of an amended set of claims on the basis of that Rule alone therefore constitutes a substantial procedural violation under Rule 103(1)(a) EPC (see point 2.2 of the Reasons).

T 2431/19 - 
https://www.epo.org/law-practice/case-law-appeals/recent/t192431eu1.html

Reasons for the Decision

2. Review of the non-admittance decision on the basis of Rule 137(5) EPC

2.1 In point II.11 of the decision under appeal, the examining division stated that "[t]he amended claims [...] cannot be admitted into the procedure pursuant [to] Rule 137(5) EPC", and in point II.15 that they "are not admitted in the procedure pursuant to Rule 137(5) EPC". In the absence of any (admitted) claims in the proceedings, the examining division refused the application (cf. Article 78(1)(c) EPC).

2.2 The board understands from these conclusions that the examining division invoked Rule 137(5) EPC to exercise a discretion with respect to the admittance of the applicant's sole claim request.

The board is aware that the Guidelines for Examination in the EPO uses terminology relating to "admittance" in connection with Rule 137(5) EPC (see, for instance, the applicable edition of November 2018, F-IV, 3.3, fourth paragraph: "such amendments may not be admitted"; H-II, 6.2, third paragraph: "such amendments are not admissible"). Moreover, some decisions (e.g. T 789/07, Facts and Submissions II and Reasons 11) apparently endorse the reliance on Rule 137(5) EPC regarding a discretionary decision in first-instance proceedings on admittance of a claim request into the proceedings.

However, the board holds that Rule 137(5) EPC, as opposed to Rule 137(3) EPC, does not confer any discretionary power to the examining division for the reasons set out below:

2.2.1 Rule 137(3) EPC provides that "[n]o further amendment may be made without the consent of the Examining Division" (board's emphasis). In the context of Rule 137(1) and (2) EPC, this means that any second and further amendment to the description, claims and drawings of a European patent application requires the consent of the examining division. This makes the admittance of such a further amendment a matter of discretion for the examining division (see e.g. T 233/12, Reasons 6). The admittance of an amendment under Rule 137(3) EPC is a procedural matter which is distinct from matters relating to substantive law (see T 1775/12, Reasons 8 and 8.1).

T 1895/13 - Rule 63 and no refund search fee

Key points

• In this examination appeal of this Euro-PCT application, the Supplementary Search Report gave a declaration under Rule 63 EPC with Rule 164(2) and (3) EPC (referred to as the "no-search declaration" by the Board).
• The applicant requests a refund of the search fee because no search was carried out.
• The refund is refused. "the Board can only apply the EPC and associated provisions as they are. Article 9(1) Rules Relating to Fees provides for a refund of the search fee only in the case that the European patent application is withdrawn at a time when the Office has not yet begun to draw up the Search Report, but not in the case of a no-search declaration under Rule 63 EPC." 
• The applicant had also requested interpretation (from and to German) for the oral proceedings before the Examing Division although the language of the proceedings was English. By not providing for the interpretation, the EPO had committed a substantial procedural violation, according to the applicant.
• " The Board, however, indicated that even if a procedural violation might have occurred, it did not appear to have substantially affected the appellant's right to be heard (Article 113(1) EPC). The appellant had not set out any actual communication problem caused by the lack of official interpretation, neither at the oral proceedings before the examining division nor with its statement setting out the grounds of appeal. Instead, the appellant addressed only hypothetical problems that might occur in general if the right to exchange arguments in a desired language was restricted." I'm not sure what the requested remedy was, but the case is not remitted. 

EPO T 1895/13 -  link

Summary of Facts and Submissions


VII. The appellant argued that the examining division erroneously denied inventive step, contested that no search was performed and therefore argued that the search fee be refunded. Finally, the appellant argued that the examining division violated it's right to be heard by refusing to provide interpretation during oral proceedings before the first instance.

Reasons for the Decision

Main request

1. Article 56 EPC - Inventive step

The Board agrees with the decision under appeal that the subject-matter of independent claim 1 lacks an inventive step for essentially the same reasons.

1.1 The claim is directed to a mix of technical and non-technical features. The Board does not dispute that the system according to claim 1 appears in a technical context. The system involves technical means such as a processor, a user interface and a communication network and, therefore, has technical character. Accordingly, the claimed subject-matter is an invention in the sense of Article 52(1) EPC (see T 258/03 "Auction method/HITACHI").

1.2 However, the question of inventive step requires an assessment of whether the invention makes a technical contribution over the prior art. Features which do not make such a contribution cannot support the presence of an inventive step (see T 641/00 "Two identities/COMVIK", Headnote I).
[..]

No-Search declaration

2. While the International Search Report cited several prior art publications, neither the Supplementary Search Report nor the Search Opinion cited any further prior art publication. Instead, the Supplementary Search Report gave a declaration under Rule 63 EPC with Rule 164(2) and (3) EPC (referred to as the "no-search declaration" by the Board).

3. Regarding the examining division's reliance on a general purpose data processing system and in contrast to the appellant's arguments, the Board accepts such prior art as notorious, i.e. no documentary evidence had to be adduced by the examining division in this respect (T 1411/08, points 4.1, 4.2). In particular, the examining division was not required to prove the pre-existence of features which even the application itself fails to disclose (such as technical details of a processor, communication networks or a user interface).

[...]

4.2 In the absence of any technical contribution beyond the straight-forward computer-implementation, the Board judges that the subject-matter of claim 1 does not involve an inventive step (Article 56 EPC) in view of the skilled person's common general knowledge or in view of D1.

[...]

Refund of the Search Fee

7. Regarding the request for a refund of the European search fee in the absence of any cited document, the Board can only apply the EPC and associated provisions as they are. Article 9(1) Rules Relating to Fees provides for a refund of the search fee only in the case that the European patent application is withdrawn at a time when the Office has not yet begun to draw up the Search Report, but not in the case of a no-search declaration under Rule 63 EPC.

Furthermore, the search division can be assumed to have analysed the set of claims before taking the decision to issue a no-search declaration, and, hence, it cannot be argued that the EPO has been unjustly enriched. The Board is also not competent to decide on claims for compensation in respect of a loss or damage allegedly caused by the EPO in the course of patent grant proceedings (J 14/87, OJ EPO 1988, 295).

Reference is made to decision T 2249/13, which concerned a similar situation (see in particular points 24 to 29 of the reasons). The Board concurs with the reasoning in this decision.

Therefore, the request for a refund of the search fee is inadmissible.

Language of the oral proceedings before the first instance

8. Oral proceedings before the first instance were held in the absence of interpreters although the appellant's representative had informed the examining division that he intended to speak and hear in the German language and had requested simultaneous translation. The examining division saw no good reason to depart from the language of the proceedings (English), but offered to clarify its comments in German where necessary while declining to act officially as interpreters.

8.1 The appellant argued that Rule 4(1) EPC unambiguously allowed a party to both speak and hear an official language chosen by the party and announced in good time. The examining division had no discretion to refuse interpretation in such a situation. By refusing to provide interpretation, the examining division also infringed the appellant's right to be heard according to Article 113(1) EPC which reflects the principle of procedural fairness. Discussing the invention in a common language served procedural economy and prevented misunderstandings. By dismissing the appellant's request for interpretation, the examining division accepted the possibility of a misdirected discussion. The dismissal limited the appellant's right to present its arguments in a desired manner in accordance with procedural regulations of the EPC. Despite a specific complaint by the appellant, the examining division was not willing to conform to those provisions, which suggested that the division was biased at least with respect to the language issue.

8.2 Again reference is made to decision T 2249/13, which concerned a comparable situation (see in particular point VII c)). In that case, the Board stated that in effect, the appellant's allegation was that the examining division infringed Rule 4(1)(5) EPC by declining to provide official interpretation when the appellant's representative had filed a timely request to speak and hear an official language other than the language of the proceedings.

The Board, however, indicated that even if a procedural violation might have occurred, it did not appear to have substantially affected the appellant's right to be heard (Article 113(1) EPC). The appellant had not set out any actual communication problem caused by the lack of official interpretation, neither at the oral proceedings before the examining division nor with its statement setting out the grounds of appeal. Instead, the appellant addressed only hypothetical problems that might occur in general if the right to exchange arguments in a desired language was restricted.

Indicating a potential problem does not mean that the problem actually occurred. The burden of proof lies with the appellant, who has not satisfied its obligation to submit facts, which allows an assessment of whether there was a substantial violation of rights.

9. For the aforementioned reasons, the Board cannot identify any substantial procedural violation by the examining division. Furthermore, the Board is not competent to revise acts (including a potential procedural violation) of the search division or to remit a case to it (Article 106(1) EPC). The Board does not need to remit the case to the department of first instance, but is able to exercise its power within the competence of the examining division (Article 111(1) EPC), in particular to assess inventive-step and to take a corresponding decision on the substance of the present case.

Order

For these reasons it is decided that:

1) The appeal is dismissed.

2) The request to remit the case to the department of first instance and the request to refund the European search fee are rejected.

T 1653/12 - Impossible search

Key point

• • In this examination appeal, the Search Division had issued a declaration that a meaningful search was impossible (for the supplementary European search after EP entry).
  • The Board considers the claims as filed on EP entry to be insufficiently disclosed. 
  • The applicant had requested, as auxiliary request, "remittal for the establishment of a European search report". The Board notes, firstly, that a " further search report"  has no legal basis, but that a "additional search" may be possible. The Board notes that "the Examining Division affirmed the decision of the Search Division not to carry out a search and to issue a declaration under Rule 63 EPC instead. A remittal would be appropriate if the Examining Division's corresponding arguments [] are incorrect". (As a comment, I don't see why, if there is no auxiliary set of claims on file).
  •  The Board notes that (at the time of the search) there was a discrepancy between the wording of the claims and the description. " Hence, [the search division] was justified in sending out the invitation under Rule 63 EPC in order to clarify the subject-matter for the search." 
  • " The applicant's response to the invitation stated [] "Even if the Search Examiner's objections [would be justified] this would not obstruct him [from] searching for a) a magnetic detection device comprising fixed resistors having an electric resistance which is independent of the external magnetic field according to claim 1 and/or b) a magnetic device wherein the fixed resistors comprise the order of the layers claimed in claim 4.".
  • The Board: "Due to the "and/or" construction, this statement does not provide a basis for the Search Examiner to perform a meaningful search. This particular wording leaves it entirely open which of the two alternatives, i.e. the fixed resistors having an electric resistance independent of the external magnetic field or the resistors with the layers as claimed in claim 4 []  should be searched. Hence, it is plausible that a meaningful search could not be made, so that the reasoned declaration under Rule 63 EPC, which is considered as the European search report, was correct." 
  • As a comment, I suppose that the "and/or" is  not helpful, but I note that the Board does not give reasons why the search division could not search both embodiments. There may be lack of unity of invention, but that is Rule 64 not Rule 63. The fact that perhaps two alternatives need to be searched, as such does not mean that is it impossible to carry out a search for two subject-matters, in my view.

EPO T 1653/12 - link

Reasons for the Decision

Main request

1. Articles 83 and 84 EPC

1.1 The issue in dispute is the interpretation of the feature of pending independent claims 1 and 7 that "the first and the second fixed resistor having an electric resistance independent of the external magnetic field".

1.2 In the summons-communication (point 2.1), the Examining Division stated that the application did not "disclose any embodiment" of a resistor having an electric resistance independent of the external magnetic field and, hence, that the application did not meet the requirements of Article 83 EPC. In particular, the Examining Division pointed out that the appellant had acknowledged, in its letter date 26 August 2011, that the fixed resistors disclosed in the application (cf. Fig. 7 and 8, and page 31, line 2 to page 36, line 12) had an electric resistance that depended on the external magnetic field.

1.3 In the statement setting out the grounds of appeal, the appellant argued that the Examining Division erred in interpreting this feature with excessive strictness. [...]

1.7 The Board does not agree. As mentioned above, the wording of the claimed feature is clear as such, claiming explicitly that the fixed resistors have an electrical resistance independent of the external magnetic field and not a "small" dependency. No embodiment for such fixed resistors with no dependency of the electrical resistance on the external magnetic field is disclosed in the application. Hence, the skilled person does not know how to make fixed resistors with a layer structure as claimed with no magnetoresistive effect at all.

1.8 It is of no relevance whether the person skilled in the art might understand that it would be possible to use resistors with only a "small" dependency (no giant magnetoresistive effect) in combination with the claimed magnetoresistive elements in order to achieve a technical effect. That is not the subject-matter that is claimed.

1.9 Consequently, the main request does not comply with the requirements of Article 83 EPC.

1.10 Due to the contradiction between the claimed feature and the embodiments in the description, the claims also lack support in the description (Article 84 EPC).

First auxiliary request

[As an auxiliary request, the appellant requested remittal for the establishment of a European search report and examination according to Arts. 92 and 94 EPC.]

2. "Additional" search

2.1 According to Rule 63(2) EPC, last sentence, the declaration under Rule 63 EPC that was issued in February 2011 is considered as the European Search Report. There is no legal basis in the EPC for a further search report.

Hence, the Board interprets the first auxiliary request as that the application be remitted to the Examining Division in order that an "additional" search be carried out prior to further examination. The Board informed the appellant about this interpretation in the communication sent out with the summons. The appellant did not comment.

2.2 In the summons-communication, the Examining Division affirmed the decision of the Search Division not to carry out a search and to issue a declaration under Rule 63 EPC instead. A remittal would be appropriate if the Examining Division's corresponding arguments under section 6.2 of the summons-communication were incorrect.

This is also foreseen in section C-IV 7.2(i) of the Guidelines for Examination in the EPO (November 2017), which states that an additional search might be performed where, after a declaration taking the place of the search report under Rule 63 EPC has been issued, the deficiencies which rendered a meaningful search impossible under Rule 63 EPC have been successfully refuted by the applicant.

2.3 Due to the discrepancy between the wording of the claims and the description, the Search Division could not identify, on its own, whether the application was filed in order to claim "fixed resistors having an electric resistance independent of the external magnetic field", or the particular resistors depicted in Figs. 7 and 8 and described in the corresponding parts of the specification (page 31, line 2 to page 36, line 12), which do have an electrical resistance dependent on the external magnetic field. Hence, it was justified in sending out the invitation under Rule 63 EPC in order to clarify the subject-matter for the search.

2.4 The applicant's response to the invitation stated (paragraph bridging pages 1 and 2, emphasis by the Board): "Even if the Search Examiner's objections as regards Arts. 83, 84 EPC would be justified (which they are not, as will be shown further below), this would not obstruct him form [sic] searching for a) a magnetic detection device comprising fixed resistors having an electric resistance which is independent of the external magnetic field according to claim 1 and/or b) a magnetic device wherein the fixed resistors comprise the order of the layers claimed in claim 4.".

2.5 Due to the "and/or" construction, this statement does not provide a basis for the Search Examiner to perform a meaningful search. This particular wording leaves it entirely open which of the two alternatives, i.e. the fixed resistors having an electric resistance independent of the external magnetic field or the resistors with the layers as claimed in claim 4 (and depicted in Figs. 7 and 8) should be searched.

2.6 Hence, it is plausible that a meaningful search could not be made, so that the reasoned declaration under Rule 63 EPC, which is considered as the European search report, was correct.

2.7 Consequently, the position of the Examining Division as expressed in section 6.2 of the summons-communication was also correct.

2.8 The appellant discussed decision T 1242/04 "Bereitstellung produktspezifischer Daten / MAN", OJ EPO 2007, 421 in its statement of grounds (section II.2) and cited passages of that decision in order to support its position that a search in the present case should not have been considered impossible.

2.8.1 The Board notes that decision T 1242/04 dealt with former Rule 45 EPC 1973, which has a different wording from current Rule 63 EPC.

With the amendment of Rule 63 EPC, the provision was introduced that the Search Division "shall invite the applicant to file, within a period of two months, a statement indicating the subject-matter to be searched" (Rule 63(1) EPC) and that a reasoned declaration under Rule 63 EPC should only be issued "if the statement under paragraph 1 is not filed in due time, or if it is not sufficient to overcome the deficiency noted under paragraph 1" (Rule 63(2) EPC).

2.8.2 Since decision T 1242/04 dealt with a case, in which no invitation of the Search Division under Rule 63(1) EPC and no response thereto was present, the reasons of that decision are not directly applicable to the present case.

2.8.3 Further, T 1242/04 dealt with a case in which the reasons given by the Search Division for not carrying out a search were based on the assertion that the claimed invention lacked technical character. In that decision, however, contrary to the Search Division, the Board identified technical subject-matter and, in particular, it referred to original dependent claims 5 and 16, which "evidently" ("offensichtlich", cf. Entscheidungsgründe, section 8.6) contained technical features.

2.8.4 It should also be noted that the passage in T 1242/04 referred to by the appellant, when completely cited, reads, in the English translation, emphasis added:

"In the Board's view, Rule 45 EPC relates only to the practicability of a search and not to the potential relevance of its results in subsequent substantive examination. That is clear from the actual wording of the rule, which refers to the impossibility of carrying out a meaningful search in the event of serious violations of the provisions of the Convention, for example a fundamental lack of clarity or the absence of any technical character whatsoever." (cf. Reasons for the decision, section 8.3).

2.8.5 Hence, according to T 1242/04, fundamental clarity problems might make it impossible to carry out a meaningful search. The discrepancy between the claims and description is such a fundamental clarity problem.

2.8.6 In addition the appellant did not use its opportunity, as provided for by the amended Rule 63 EPC, to provide the Search Division with subject-matter on which a search could be carried out.

2.9 Consequently, the first auxiliary request, remittal for an "additional" search, is not allowable.

3. Reimbursement of appeal fee (Rule 103(1)(a)EPC)

3.1 According to Rule 103(1)(a) EPC, the appeal fee shall be reimbursed in full in the event that the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation.

3.2 The Board does not deem the appeal to be allowable, hence the request for reimbursement of the appeal is refused.

Order

For these reasons it is decided that:

The appeal is dismissed.