Key points
- This is an appeal against a refusal. The applicant files amended claims with the SoG and tries hard to get them admitted. The case is a bit unusual in that the applicant tries to revert to the penultimate version of the claims pending before the ED.
- “The appellant justified the filing of the new main request as follows ... : "During prosecution of the present application, the Examining Division allowed only the bare minimum of procedural space, comprising the EESR, a single examination report and summons to Oral Proceedings. The decision to refuse the present application is based on several alleged deficiencies. In view of the quite considerable changes in the claims of September 15, 2015 that were discussed at the Oral Proceedings, relative to the version of October 16, 2012. However, that previous version of October 16, 2012, is now used as a basis for the present appeal. To address objections in the Preliminary Opinion with the summons to appear before the Examining Division and in the decision to refuse the application, further amendments are introduced therein."”
- The Board: “the appellant chose not to continue to use these claims as a basis for further amendments that took into account the objections of the examining division. However, in the board's view, such claims should have been prosecuted in the examination proceedings at least as an auxiliary request, so that they would have been subject to an appealable decision. The appellant has thus effectively prevented the department of first instance from giving a reasoned decision on amendments inserted into the claims of the request filed by letter dated 16 October 2012 in response to the department's previously raised objections. The appellant has thereby compelled the board of appeal either to give a first ruling on those amendments or to remit the case to the department of first instance.”
- “ if the amended claims in question had been presented in the proceedings before the examining division. The appellant should have allowed the examining division to exhaustively assess and then decide on all subject-matter for which it intended to seek protection, even if only on a subsidiary basis, if it wished the board to rule on it. This approach is also in line with established case law (see Case Law, V.A.4.11.4b)).”
- The Board uses Art. 12(4) RPBA 2007 as the legal basis. It may be observed that strictly speaking the request at issue was presented before the department of first instance and not held inadmissible; that such requests are covered by the rule appears to be clarified in Art.12(6)(s.2)(ii) RPBA 2020.
- Under the RPBA 2020, an interesting point is that such requests appear to be also covered, expressly, by the more liberal provision of Art.12(4) RPBA 2020.
Reasons for the Decision
1. The appeal is admissible.
Main request - discretionary power under Article 12(4) RPBA 2007
2. In the present case, the statement of grounds of appeal was filed before the date on which the revised version of the Rules of Procedure of the Boards of Appeal (RPBA 2020) entered into force, i.e. 1 January 2020 (see OJ EPO 2019, A63). Thus, in accordance with Article 25(2) RPBA 2020, Article 12(4) to (6) RPBA 2020 does not apply. Instead, Article 12(4) of the Rules of Procedure of the Boards of Appeal in the version of 2007 (RPBA 2007 - see OJ EPO 2007, 536) continues to apply.
According to Article 12(4) RPBA 2007, the board has the discretionary power to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first-instance proceedings. Since, in fact, almost every claim request could have been presented before the department of first instance,the question within that context is whether the situation was such that the filing of this request should already have taken place at that stage (see Case Law of the Boards of Appeal of the EPO, 9th edition, July 2019, hereinafter "Case Law", V.A.4.11.1). The board exercises its discretion under Article 12(4) RPBA 2007 having regard to the particular circumstances of the individual case (see e.g. decision T 1178/08, point 2.3). However, as was held in G 10/93 (OJ EPO 1995, 17, point 4 of the Reasons), "[p]roceedings before the boards of appeal in ex-parte cases are primarily concerned with examining the contested decision". Appeal proceedings are not a continuation of examination at first instance or a second, parallel procedure for the substantive examination otherwise to be carried out by the examining division which applicants could freely opt to launch depending on the circumstances (see Case Law, V.A.4.11.4b), in particular the cited decisions T 1108/10 and T 1212/08).
3. The amended claims according to the present main request were filed for the first time with the statement of grounds of appeal. The appellant justified the filing of the new main request as follows (see statement of grounds, page 5, fourth and fifth paragraphs):
source http://justpatentlaw.blogspot.com/2021/12/t-087816-resubmitting-claims.html
