Wednesday, 25 January 2017

T 1205/13 - A request that was not decided upon


In the summons to oral proceedings before the Examining Division, the Examining Division objected under Art.56 EPC (inventive step). The applicant then replaced those claims with two new sets, which were refused because of deficiencies under Art.123(2) and 84 (extension of subject-matter and clarity) caused by the amendments. In appeal, the applicant filed the original claims as main request. What did the Board do? No decision was taken in first instance about this claim set, as the applicant replaced them before a decision could be taken - the applicant was adversely affected by the refusal, but the refusal related to the replaced claim. Also, the refusal was based on Art. 123(2) and 84, and not on Art. 56 that the Examining Division held against these claims in its preliminary opinion.

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division of the European Patent Office, posted on 21 December 2012, refusing European patent application No. 09251664.0 pursuant to Article 97(2) EPC.

II. The notice of appeal was received on 7 February 2013. The appeal fee was paid on the same day. The statement setting out the grounds of appeal was received on 30 April 2013.

The appellant requested that the appealed decision be set aside and that a patent be granted on the basis of the main request or first to third auxiliary requests, all filed with the statement setting out the grounds of appeal. Oral proceedings were requested as an auxiliary measure.

III. By communication dated 5 July 2016 the board summoned the appellant to oral proceedings on 17 November 2016.

IV. By communication dated 12 September 2016 the board expressed its opinion that, after a first assessment of the case oral proceedings no longer appeared necessary, and informed the appellant that it intended to cancel the oral proceedings and to issue a decision in the written procedure setting the decision under appeal aside and remitting the case to the department of first instance for further prosecution on the basis of the main request filed with the statement setting out the grounds of appeal.

The appellant was invited to submit its comments before the date set for oral proceedings.

V. By letter dated 17 October 2016 the appellant confirmed its willingness to comply with the proposal from the board to remit the case to the department of first instance for further prosecution.

VI. The oral proceedings were then cancelled by the board.

Reasons for the Decision

1. Admissibility

The appeal complies with Articles 106 to 108 EPC (see Facts and Submissions, point II above). It is therefore admissible.

Main request

2. This request corresponds to the set of claims filed for the first time in the first-instance proceedings on 16 June 2011 as the then sole request and dealt with in the annex to the summons to oral proceedings before the department of first instance dated 23 August 2012.

2.1 The claims of this request were already discussed and objected to under Article 56 EPC in the first-instance proceedings in the annex to the summons for oral proceedings before the first instance (see items 2.1 to 2.4). The applicant, of its own volition, subsequently replaced those claims with two new sets of claims including amendments aimed at overcoming the objection of lack of inventive step. On the basis of those amended sets of claims the application was refused because of deficiencies under Articles 123(2) and 84 EPC introduced by the amendments.

2.2 It follows that the claims of the present main request filed with the statement setting out the grounds of appeal were already presented during the first-instance proceedings and were thereafter replaced. That prevented them from being decided on as to their merits by the examining division. The appellant is not adversely affected by the decision under appeal with regard to this set of claims.

2.3 The requirement of Article 56 EPC has not yet been decided upon for the subject-matter of the independent claims on file, nor was it discussed during the oral proceedings before the department of first instance.

2.4 According to Article 111(1) EPC the board may exercise any power within the competence of the examining division (which was responsible for the decision under appeal) or remit the case to that department for further prosecution. It is thus at the board's discretion whether it examines and decides on the case or whether it remits the case to the department of first instance.

2.5 For the aforementioned reasons (see point 2.4), the board considers that in the present case remittal is the more appropriate course of action.

3. Regarding the appellant's auxiliary request for oral proceedings submitted with the statement setting out the grounds of appeal (see page 1, second paragraph), it is clear from the mandatory wording of Article 116(1) EPC that a party which requests oral proceedings is in principle entitled to such proceedings (see for example T 19/87 of 16 April 1987, OJ EPO 1988, 268). However, in the present case the request for oral proceedings was made on an auxiliary basis and reads: "We request oral proceedings in lieu of any adverse decision". Since the board does not intend to refuse the application according to the appellant's request, oral proceedings are not necessary. The board notes that remitting the case does not fall under the conditions set in this request, since the objections under Articles 123(2) and 84 EPC on which the appealed decision was based are not maintained for the main request, and no further objections are raised by the board.

The appellant requested grant of a patent on the basis of the main request. However, as stated in decision T 42/90 of 25 February 1991, point 5, the decision to remit the case to the department of first instance is not to be considered as being adverse to that party, so that no oral proceedings before the board need to be appointed (see also T 1434/06 of 12 April 2010, point 3 and "Case Law of the Boards of Appeal of the EPO", 8th edition, 2016, III.C.2.5).

4. For these reasons, and since the appellant confirmed its willingness to comply with the proposal from the board to remit the case to the department of first instance for further prosecution, the decision can be taken in writing.

Order

For these reasons it is decided that:

The case is remitted to the department of first instance for further prosecution on the basis of the main request.

This decision T 1205/13 (pdf) has European Case Law Identifier: ECLI:EP:BA:2016:T120513.20161129. The file wrapper can be found here. Photo "Repairs - As before, some holes could be flashed." by Brian Robinson obtained via Flickr under CC BY 2.0 license (no changes made).

4 comments :

  1. Why was the previously withdrawn request admitted? Case Law IV.E.4.3.3 c), "it is established case law that the Boards of Appeal do
    not admit requests that were withdrawn during first instance proceedings".

    ReplyDelete
  2. I agree that the approach the BoA has chosen is indeed unusual. To me, it also seems strange that the BoA apparently has not issued a decision "on the appeal" (see A. 111(1), 1st sent.). Thus, it is questionable if a remittal of the case to the department of first instance for FURTHER prosecution (see A. 111(1), 2nd sent. EPC) is actually allowed.

    In this regard, the term "for FURTHER prosecution" in A. 111(1), 2nd sent. means to me that there has been made a decision "on the appeal" i.e. necessarily a decision regarding the subject-matter of the refused Requests before the department of first instance before a remittal comes into question.

    This notion seems to be in line with A. 111(2) EPC which states that the department of first instance shall be bound by the ratio decidendi of the BoA, in so far as the facts are the same. It appears to be unclear what the ratio decidendi are in the present case if there has not been made a decision on the object of the appeal. What do you think?

    ReplyDelete
  3. A further curiosity seems to be that the decision has not been revoked by the BoA. Has it become final (res judicata) then?

    ReplyDelete
    Replies
    1. You are right, the order lacks the usual sentence "the decision under appeal is set aside". With the refusal still in existence, there seems nothing left to prosecute further.

      Delete

Statcounter