Tuesday, 24 February 2015

T 1214/09 - Discretion to allow amendments



The Examining Division refused a European patent application after concluding lack of inventive step in view of document D2 of the subject-matter of claim 1 of a main request . A first and a second auxiliary request were not admitted into the proceedings under Rule 137(3) EPC. The Board reviews these decisions and concludes that, in so far as the Examining Division did apply the correct criteria in exercising its discretion under Rule 137(3) EPC, it did so in an unreasonable way and thereby exceeded the proper limits of its discretion.

Summary of Facts and Submissions
I. The applicant (appellant) lodged an appeal against the decision of the Examining Division refusing European patent application No. [...].
II. The contested decision cited the following documents: D2: [...] and D4: [...]
The Examining Division came to the conclusion that the subject-matter of claim 1 of a main request lacked an inventive step in view of document D2. A first and a second auxiliary request were not admitted into the proceedings under Rule 137(3) EPC.

III. With the statement of grounds of appeal, the appellant maintained its main request and submitted new first and second auxiliary requests.
IV. In a communication accompanying a summons to oral proceedings, the Board introduced the following document: D6: [...]
The Board inter alia expressed the preliminary view that the subject-matter of claim 1 of each request lacked an inventive step.
V. With a letter dated 18 June 2014, the appellant amended its main request and first and second auxiliary requests and filed a new third auxiliary request.
VI. Oral proceedings were held on 18 July 2014. At the end of the oral proceedings, the chairman pronounced the Board's decision.
VII. The appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the claims of the main request or, in the alternative, of one of the first to third auxiliary requests.
VIII. Claim 1 of the main request reads as follows:
[...]
IX. Claim 1 of the first auxiliary request differs from claim 1 of the main request in that its characterising part reads: [...]
X. Claim 1 of the second auxiliary request differs from claim 1 of the main request in that its characterising part reads: [...]
XI. Claim 1 of the third auxiliary request differs from claim 1 of the main request in that its characterising part reads: [...]
XII. The appellant's arguments with respect to the main request which are relevant to this decision can be summarised as follows. [...]
XIII. With respect to the first auxiliary request, the appellant submitted that [...]
XIV. With regard to the second and third auxiliary requests, the appellant essentially argued that the [...]
Reasons for the Decision
1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.
2. The invention
[...]
Main request
3. The main request corresponds to the main request on which the appealed decision is based, amended to meet an objection raised by the Board in the communication accompanying the summons. The Board therefore admits this request (Article 13(1) RPBA).
4. Inventive step - Article 56 EPC
[...]
4.10 Consequently, the subject-matter of claim 1 lacks an inventive step (Articles 52(1) and 56 EPC).
First auxiliary request
5. Admission into the proceedings
5.1 The first auxiliary request essentially corresponds to the first auxiliary request before the Examining Division. The Examining Division decided not to admit the latter under Rule 137(3) EPC, giving as reasons that it had been filed during the oral proceedings, that the amendments to claim 1 were directed to the solution of a different technical problem vis-à-vis document D2 when compared to claim 1 of the then main request, and that claim 1 appeared prima facie to be not inventive over a combination of documents D2 and D4. The Examining Division added that the relevance of document D4 for (previous) dependent claims 4 and 5, on which amended claim 1 was based, had already been indicated in the communication annexed to the summons to oral proceedings.
5.2 Claim 1 of the first auxiliary request before the Examining Division does indeed essentially correspond to a combination of independent claim 1 and dependent claims 4 and 5 of the claims on which the communication annexed to the summons was based. Since these dependent claims were identical to originally filed dependent claims 4 and 5 and the European search report had been drawn up for all claims, the proposed amendment was of a very common nature that should in principle not have presented the Examining Division with particular difficulties. The Examining Division indeed did not argue that it could not be expected to deal with the first auxiliary request at the oral proceedings.
5.3 The Examining Division did observe that the amendments to claim 1, when compared to claim 1 of the then main request, solved a different technical problem vis-à-vis document D2. However, this observation implies that the amendments overcame the specific objection of lack of inventive step that had been raised against claim 1 of the main request. It is therefore an argument in favour of admission of the first auxiliary request, rather than against.
5.4 The Examining Division was of course correct in noting that the first auxiliary request was filed during the oral proceedings and therefore late, but lateness alone is not a sufficient reason for not admitting a request. The remaining reason given by the Examining Division is that of a prima facie lack of inventive step in view of a combination of documents D2 and D4, the relevance of document D4 having been indicated in the communication annexed to the summons.
5.5 The Board notes that this communication only included a general statement to the effect that the additional features of all dependent claims were either known from documents D2 and D4 or represented only a customary design or implementation procedure for the skilled person. The single communication under Article 96(2) EPC 1973 included a similar general statement with respect to the dependent claims as originally filed.
Such general statements may sometimes be useful for informational purposes, in particular where a justification exists for not including a reasoned statement covering all the grounds against the grant of the European patent (Rule 71(2) EPC). But their inclusion cannot, as a rule, serve as an argument for not admitting a request.
5.6 In addition, the minutes of the oral proceedings before the Examining Division show that the relevance of document D4 for amended claim 1 of the first auxiliary request was not discussed at the oral proceedings either.
5.7 In the Board's view, an amended claim cannot be said to be prima facie not inventive over a combination of documents that has not been discussed at all save for an allusion to it in a general statement. The Board therefore concludes that, in so far as the Examining Division did apply the correct criteria in exercising its discretion under Rule 137(3) EPC, it did so in an unreasonable way and thereby exceeded the proper limits of its discretion (see G 7/93, OJ EPO 1994, 775, reasons 2.6).
5.8 For these reasons the Board exercises its discretion under Article 13(1) RPBA to admit the first auxiliary request into the proceedings. Since, furthermore, the Board is in a position to deal with the merits of this request, it will not remit the case to the Examining Division but will itself proceed with the examination of inventive step (Article 111(1) EPC).
6. Inventive step - Article 56 EPC
[...]
6.8 Consequently, the subject-matter of claim 1 lacks an inventive step (Articles 52(1) and 56 EPC).
Second auxiliary request
7. The second auxiliary request corresponds to the second auxiliary request filed with the statement of grounds, amended to address objections raised by the Board in the communication accompanying the summons. The Board therefore exercises its discretion under Article 13(1) RPBA to admit the request into the proceedings.
8. Inventive step - Article 56 EPC
[...]
8.4 The subject-matter of claim 1 hence lacks an inventive step (Articles 52(1) and 56 EPC).
Third auxiliary request
9. The third auxiliary request was filed after the Board arranged oral proceedings. Since it does not raise issues which the Board cannot deal with, it is admitted into the proceedings (Article 13(1) and (3) RPBA).
10. Inventive step - Article 56 EPC
[...]
10.5 The subject-matter of claim 1 therefore lacks an inventive step (Articles 52(1) and 56 EPC).
Conclusion
11. Since none of the requests on file is allowable, the appeal is to be dismissed.
Order
For these reasons it is decided that:
The appeal is dismissed.

 
This decision has European Case Law Identifier: ECLI:EP:BA:2014:T121409.20140718. The whole decision can be found here (pdf). The file wrapper can be found here. Photo "No right turn - If you want to go onto North View, you have to go right round the roundabout. by Rob Brewer obtained via Flickr under CC BY 2.0 license (no changes made).

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