Tuesday, 9 September 2014

T 1354/13 - Late filed request

In this appeal, two issues were mainly at stake: the refusal of the Examining Division to admit a request in oral proceedings and the issue of unsearched subject-matter.
 Summary of Facts and Submissions
I. The appeal is directed against the decision to refuse European patent application No. 01 924 569.5, published as international application WO 01/74084 A2.
II. On 16 November 2006 the examining division issued a first communication pursuant to Article 96(2) EPC 1973. The examining division objected essentially that the claims on file did not comply with Articles 54(1), (2) and 56 EPC.
III. With a letter of 24 May 2007 the applicant filed a set of new claims to overcome the examining division's objections.
IV. In reply, the examining division issued a summons to oral proceedings to be held on 29 November 2012 and raised objections concerning extension of subject-matter for claim 1 and lack of inventive step for all claims.
V. With a letter dated 29 October 2012 the applicant filed amended claims of a main request and first to fourth auxiliary requests.
VI. A telephone consultation between the first examiner and the applicant's representative took place on 21 November 2012. According to the minutes of the consultation posted on 30 November 2012, the applicant's representative "was informed about the examining division's provisional intention of making use of its discretion of not admitting (Rule 137(3) EPC, GL H-II-2.3) any of the requests submitted by the representative with letter of 29.10.2012".
VII. Oral proceedings before the examining division were held as scheduled on 29 November 2012. According to the minutes of the oral proceedings, the main request was "not admitted into the proceedings as the subject-matter of independent claim 1 does not combine in a unitary manner with the claims as originally filed and for which a search has been carried out (Rule 137(5) EPC)." The representative "asked whether it would be possible to continue in writing in order to allow the Examining Division to perform a new search directed to the new direction." This request was declined by the examining division. After a break of twenty minutes the representative submitted a further request "replacing all other requests previously on file." The further request was not admitted into the proceedings "using the discretion of the Examining Division derived from Rule 137(3) EPC", because "the subject-matter of independent claim 1 prima facie does not meet the requirements of inventive step (Article 56 EPC)."
At the end of the oral proceedings the examining division refused the application.
VIII. With a letter of 7 January 2013 the applicant responded to the minutes of the telephone consultation held on 21 November 2012. The applicant stated that it disagreed "that the Examiner mentioned the division's provisional intention to make use of Rule 137(3) EPC." The applicant's representative submitted a declaration by a patent engineer, who "was in my office with me during the consultation call, which was relayed on the telephone's loudspeaker, and neither he nor I remember any mention of Rule 137(3) EPC."
IX. The written decision and the minutes of the oral proceedings were posted on 24 January 2013.
X. The reasons of the decision under appeal can be summarised as follows.
The claims searched and the sets of amended claims submitted up until the summons to oral proceedings had been directed towards a method of calculating a transfer interval based on available bandwidth. The claims of the main request submitted in reply to the summons to oral proceedings were, "contrary to the claims searched and the amended claims submitted up until the summons to oral proceedings, directed to a specific method of signalling when to insert, and when to present, metadata." The subject-matter according to the main request was therefore not searched.
The division held that because "the originally claimed invention - addressing the problem of timely transmitting additional data in a rate constrained environment by the calculation of a transfer interval - lacks novelty over D1 (cf. summons to the oral proceedings, item 2 therein) there can exist no single general inventive concept with the subject-matter of the main request submitted with letter of 29.10.2012 - addressing the problem of signalling insertion points of additional data into primary content by the use of trigger points and assets."
Hence, the claims of the main request related to unsearched subject-matter which did not combine with the originally claimed invention to form a single general inventive concept. As a consequence, based on Rule 137(5) EPC, it was decided not to admit the main request into the proceedings (see decision under appeal, Reasons 12).
The set of claims submitted during the oral proceedings (henceforth auxiliary request) prima facie did not meet the requirements of inventive step. Hence, the claims were not clearly allowable in the sense of the Guidelines H-II, 2.7. As a consequence, the examining division "decided to make use of its discretionary power of not admitting the late submitted request into the procedure based on the provisions of Rules 116(2) and 137(3) EPC" (see decision under appeal, Reasons 13).
The application was therefore refused for "lack of claims submitted by the applicant on which a decision can be based (Article 113(2) EPC)."
XI. With the statement of grounds of appeal the appellant requested that the decision under appeal be set aside and that the case be remitted to the examining division with the order to grant a patent according to a sole set of claims submitted together with the statement of grounds of appeal and a description to be adapted thereto. In the alternative the appellant requested that the case be remitted for further prosecution on the basis of these claims. Furthermore the appellant requested that the appeal fee be reimbursed under Rule 103(a) EPC, as such reimbursement was equitable in view of substantial procedural violations which had occurred during examination of the application. The appellant also requested oral proceedings if the board could not accede to the appellant's requests in the written procedure.
XII. The appellant's arguments with respect to the alleged procedural violations may be summarised as follows.
The appellant was surprised by the objection under Rule 137(5) EPC, which had only been raised in the oral proceedings and which did not leave sufficient time to prepare comments. It had been requested that the proceedings be continued in writing, but only twenty minutes had been allowed for the applicant to prepare a new set of claims.
The examining division had not admitted the new set of claims submitted during oral proceedings. This was also in breach of the applicant's right to have an opportunity to present comments, because the applicant was not allowed sufficient time to prepare such comments.
Furthermore, the appellant argued that the examining division had not exercised its discretion in a proper way when it decided not to admit the auxiliary request pursuant to Rules 116 and 137(3) EPC. The request had not been late compared to the delay in the Office's communications. Moreover, by submitting this request the appellant had overcome the objection under Rule 137(5) EPC and was prepared to discuss inventive step.
XIII. In an annex to a communication pursuant to Article 15(1) RPBA the board indicated that it intended to remit the case to the department of first instance for further prosecution on the basis of the set of claims filed with the statement of grounds of appeal. It also gave its provisional opinion as to why it did not consider reimbursement of the appeal fee to be equitable in the present case.
XIV. In a reply dated 7 January 2014 the appellant withdrew its request for oral proceedings. It did not comment on the board's provisional opinion on reimbursement of the appeal fee.
XV. Independent claim 1 of the appellant's sole request reads as follows:
"A method for inserting asynchronous data into a synchronous data stream, said asynchronous data comprising a first metadata package (204, 304, 404, 504) having a first size, said method comprising:
receiving information including a first time value when said asynchronous data may be used;
determining a transfer interval for said asynchronous data, the transfer interval being determined as a function of a constant minimum bandwidth for metadata transmission and said first size of the metadata package;
inserting said asynchronous data into said synchronous data stream at a time prior to said first time value by an amount that is greater than or equal to said transfer interval; characterised in that:
said first metadata package (204, 304, 404, 504) corresponds to a first event trigger (202, 302, 402, 502); and that the method further comprises:
inserting the first event trigger (202, 302, 402, 502) at a point in the synchronous data stream corresponding to said first time value."
Reasons for the Decision
1. Applicable version of Rule 137 EPC
[...] 
2. Admissibility of the appeal
[...]
3. The decision under appeal
The appellant chose not to maintain the requests underlying the decision under appeal. Instead, it submitted an amended set of claims and requested that a patent be granted on the basis of these claims.
Pursuant to Article 113(2) EPC 1973 the European Patent Office shall consider and decide upon the European patent application only in the text submitted to it, or agreed, by the applicant. Hence, the patentability of the claims underlying the decision under appeal do not form a subject of the appeal proceedings. As a consequence, the board only needs to review the examining division's decision in respect of the alleged substantial procedural violations having led to this decision.
4. Admissibility of the main and auxiliary requests
4.1 With its statement of grounds of appeal the appellant seeks grant of a patent on the basis of the main request, i.e. new claims filed with the statement of grounds, and a description to be adapted thereto. In the alternative, the appellant requested that the case be remitted for further prosecution based on these claims.
4.2 According to Article 12(4) RPBA the board may hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first-instance proceedings.
4.3 New claim 1 contains all the features of claim 1 as originally filed. The amendments to claim 1 (and similarly also those to the further independent claim 4) relate to a first metadata package and an event trigger. The claimed subject-matter resulting from the incorporation of these additional features combines the originally claimed invention with additional features narrowing down the original concept. In particular, the specification of an event trigger is explicitly included in the concept set out in the description from page 2, fourth paragraph, to page 3, first paragraph. It may be summarised as managing the transfer of metadata so as to allow maximum data size that may be transferred for each trigger event. A search "on the basis of the claims, with due regard to the description and any drawings" (see Article 92(1) EPC 1973) may thus be assumed to have covered this subject-matter.
4.4 Hence, the amended claims can be considered a bona fide reaction of the appellant to overcome the objections that were raised in the oral proceedings before the examining division. In view of the circumstances of the present case (see points VI to VIII) it is apparent that the failure to file appropriate alternative requests before the department of first instance resulted from an incorrect understanding of the procedure rather than from any tactical abuse.
4.5 The new set of claims also complies with Rule 137(4) EPC in the applicable version (see above, point 1), on which basis the examining division had declined to admit the main request in the version before it (see decision under appeal, points 12.1, 12.2 and 12.5, referring to corresponding Rule 137(5)). The board agrees with the view taken in decision T 2334/11 (see Reasons 2.2.2) that a presumed lack of novelty of the subject-matter of original claim 1 does not necessarily entail the consequence of a lack of a single general inventive concept in the sense of Rule 137(4) EPC. Instead, if an originally filed claim is amended by adding a feature to it, it has to be examined whether the added feature forms part of a single general inventive concept (in the meaning of one invention only; see e.g. G 1/89, OJ EPO 1991, 155, point 4) as it can be understood from the application as originally filed.
In the present case and as set out above (see point 4.3), the inventive concept can be perceived as managing the transfer of metadata so as to allow maximum data size that may be transferred for each trigger event. As a result, the additional features specifying a first metadata package and an event trigger narrow down the original inventive concept and therefore the amended claims relate to subject-matter which combines with the originally claimed invention to form a single general inventive concept.
4.6 As a result the board decides to admit the amended claims of the main and auxiliary requests.
5. Remittal
5.1 [...]
5.2 Instead, the board follows the appellant's alternative request and exercises its discretion under Article 111(1) EPC 1973 in remitting the case to the examining division for further prosecution on the basis of the claims of the main request submitted with the statement of grounds of appeal.
6. Substantial procedural violations
[...]
6.3 The appellant argued that its right to be heard had been infringed for essentially two reasons:
a) The applicant was only informed during the oral proceedings about the objection under Rule 137(4) EPC (referred to as Rule 137(5) EPC), which did not leave sufficient time to prepare comments. Only twenty minutes were allowed for the applicant to prepare a new set of claims despite its request to continue the proceedings in writing.
b) The examining division did not admit the auxiliary request submitted during oral proceedings, and the applicant was not allowed sufficient time to prepare comments.
6.4 Article 123 EPC governs the right to amend an application, with Rule 137 EPC being an implementing rule to Article 123(1) EPC.
Regardless of whether the examining division's decision to not admit the claims according to the appellant's requests was correct, the board considers that an applicant who presents extensively revised claims at a late stage of the proceedings has to be prepared for the possibility that the admissibility of these claims will be considered in accordance with Article 123 and Rule 137 EPC. In the present case the claims were extensively revised in preparation for the oral proceedings, with the revision including the deletion of features. Furthermore, the appellant did not contest that the claims submitted on 29 October 2012 shifted the focus of the invention from the calculation of transfer intervals to the signalling of when to present data (see minutes of oral proceedings, point 2, third paragraph, and statement of grounds, page 2, penultimate paragraph). Hence, the applicant should have expected an examination of the amended claims for compliance with Article 123 and Rule 137 EPC. There was no obligation to inform the applicant in the telephone consultation of 21 November 2012 about a possible corresponding objection, and the examining division was free to raise such an objection in the oral proceedings and to decide not to admit the amended claims. Hence, in the present case it is not relevant whether or not the appellant was actually informed prior to the oral proceedings about a possible objection under Rule 137 EPC (see points VI and VIII above). Furthermore, against the backdrop of Rule 137(3) EPC subjecting admission of further amendments to the examining division's consent, the board does not see special circumstances which would have required the examining division to provide more than twenty minutes for preparing a new set of claims during the oral proceedings or to continue the proceedings in writing.
6.5 With respect to point (b) the board concludes from the minutes of the oral proceedings (see point 3, last two paragraphs starting with "The professional representative replied ...") and from the Reasons of the decision under appeal (see point 13.2) that the appellant's representative was given an opportunity to present comments and that he actually availed himself of this opportunity. It follows that the right to be heard was not infringed as regards the auxiliary request.
6.6 For the reasons set out above relating to Rule 137(3) EPC, which gives an examining division the power to refuse its consent to further amendments, the appellant's argument that the filing of the request was not late compared to the delay in the Office's communications is not relevant to the present decision.
6.7 Hence, the board cannot see that the proceedings before the department of first instance were tainted by a substantial procedural violation. As a consequence, the requirements of Rule 67, first sentence, EPC 1973 for reimbursement of the appeal fee are not met in the present case.
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the department of first instance for further prosecution.

3. The request for reimbursement of the appeal fee is refused.
This decision has European Case Law Identifier:  ECLI:EP:BA:2014:T135413.20140430The whole decision can be found here.The file wrapper can be found here. Photo by herlitz_pbs obtained via flickr.


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