Wednesday, September 20, 2017 T 914/13 - One 71(3) in the hand worth two in the bush?

During oral proceedings before the Examining Division, an auxiliary request of the applicant was found to meet the requirements of the EPC.  However, in response to the Rule 71(3) EPC communication, the applicant reverted to earlier higher-ranking requests. The application was refused by the ED. 

The applicant appeals, but in its preliminary opinion, the BoA essentially concurs with the ED in respect of the higher-ranking requests, and additionally finds claim 2 of the auxiliary request for which the intention to grant was issued earlier to contravene Art. 84 EPC.

Ultimately, the applicant files a sole main request based on the subject matter of the 'previously allowed' auxiliary request but with claim 2 deleted, and argues that, except for claim 2 having been deleted, the claims of the main request correspond to those on the basis of which the ED had issued its intention to grant during the examination proceedings.

However, rather than ordering a grant, the BoA remits the case back to the ED for further prosecution, while noting that it is not bound to the previous intention to grant, and suggesting that the arguments provided by the applicant in support of inventive step of the main request were to be heard.

Tuesday, September 22, 2015 T 2001/14 - No requests, application refused

This decision shows that filing amended claim sets after receiving an intention to grant R.71(3) is not without risk.

After the applicant had received the intention to grant based on a claim set filed during oral proceedings, new requests were filed.

The Examining division did not allow these new claims and refused to issue new oral proceedings; "without an allowable request on file, the application shall be refused under Article 90(5), Rule 137(3)".

The applicant appealed the decision to refuse and filed a main and two auxiliary requests.  The second auxiliary request is identical to the claims for which the R.71(3) was issued.

The statement of grounds does not discuss Rule 137(3); That is, the statement of grounds does not question if the Examining division was correct not to allow the new auxiliary requests in to the proceedings. The board is tempted to refuse the appeal on this basis as the appeal is unsubstantiated. 

The current version of R.71 is applicable in this case.


Reasons for the Decision

1. Admissibility of the appeal

Tuesday, June 30, 2015 T 1775/12 - Second Oral Proceedings

If an application is granted on a request filed during oral proceedings, does that applicant have a right to second oral proceedings if that request is refused? 

To set the context, I'll summarize the prosecution history. In 2008 this application was filed as one of four divisionals. During prosecution two official communications were sent under art. 94(3), after each of which an amended claim set was filed. In response to a summons for oral proceedings a further amended claim set was filed. During the oral proceedings, an auxiliary request was filed, followed by an amended auxiliary request. The latter was then granted.

After receiving the intention to grant communication (R.71(3)), the applicant files a new request. The new claim set has been broadened with respect to the granted claim set by deleting a feature. In the ensuing correspondence, the applicant request new oral proceedings "as a matter of precaution", however the Examining division now refuses the application without granting a second oral proceeding.

The board of appeal sides with the applicant and finds that his right to be heard was violated. The case is remitted and a second oral proceeding is to be held. It appears however, that the second oral proceedings may be limited to the issue of admissibility.

The board provided the following catchwords: