Key points
- "The examining division, in exercise of the discretion provided by Rule 137(3) EPC, decided not to consent to the amendments introduced in the main request and in the auxiliary requests 1 to 13, all requests filed on 28 July 2020. "
- "The Board comes to the conclusion that [] the examining division exercised its discretion under Rule 137(3) EPC in an unreasonable manner thereby exceeding the limits of the discretion, and that the deficient reasoning in the contested decision gives rise to a substantial procedural violation in the meaning of Article 113(1) EPC and Rule 111(2) EPC detrimental to the appellant's (applicant's) right to be heard,"
- "the Board agrees that the criterion that an amended set of claims is "prima facie" not allowable (so called "clear non-allowability") is, in general, an accepted principle (amongst others) to be taken into account in the assessment of whether consent under Rule 137 (3) EPC should be given to the amendment. However, the Board concurs with the appellant (applicant) that the examining division did not duly balance this criterion with the equally relevant principle of the legitimate interest of the appellant to obtain a valid patent."
- "that the requests dated 28 July 2020 were filed in due time, i.e. within the time limit set according to Rule 116(1) EPC, and that they are convergent, as also acknowledged by the examining division in its decision (see page 4). In fact each lower raking auxiliary request is further limited with respect to the preceding higher ranking request by incrementally introducing additional features. "
- "he amendments filed by the appellant (applicant) in response to the summons to oral proceedings represent a fair attempt to overcome the "prima facie" objections raised therewith by the examining division under Articles 84 and 123(2) EPC"
- "In particular, in order to respond to the "prima facie" objection of the examining division that several features were allegedly essential for understanding the invention and for achieving the claimed technical effect and hence, as such, could not be omitted from the independent claims, the appellant (applicant) incrementally introduced in the main request and in the auxiliary requests at stake further technical features, "
- "In the Board's view, as the amendments are considered at least to go in the right direction, the decision of the examining division to assess "prima facie", i.e. without discussing any of them in detail, that they were all unsuitable for overcoming the objections raised is not justified."
- " the Board shares the appellant's (applicant's) view that discussing the alleged "clear non-allowability" for each request separately, as wished by the appellant (applicant), would have been fair and appropriate and therefore should have not been denied by the examining division at the oral proceedings. "
- "Finally, the objection of the examining division that the fact that no adapted description was concurrently filed resulted in the impossibility to interpret the claims in the light of the description is not convincing and in itself does not justify the rejection of all the amendments under Rule 137(3) EPC. In fact the Board cannot see why, in the event that an interpretation of the scope of the claims in the light of the description was required and justified, also the originally filed description could not be used."
- For all the reasons above the Board thus concurs with the appellant (applicant) that the examining division exercised its discretion under Rule 137(3) EPC in an unreasonable manner and thereby exceeded the proper limits of its discretion.
- Turning to when features are "essential" for Art. 84: "In particular, it was correctly argued [by the applicant] that in order to assess [whether] a feature was essential or not, the technical problem addressed by the application must be considered, whereby any feature which did not contribute to solve this technical problem was not an essential feature and therefore did not need to be recited in the independent claim/s which otherwise would be unduly limited in scope. "
- On the right to be heard: " the Board concludes that the examining division should have addressed the arguments provided by the appellant (applicant) in the decision under appeal and explained why they were considered not convincing, and not simply list the objections at stake and assert that the right to be heard was respected, as recited in the contested decision, page 6 onwards." ... the Board agrees with the appellant (applicant) that the reasoning presented in the section of the decision dealing with the alleged "clear non-allowability" issue in view of Article 84 EPC (see page 6, fourth full paragraph onwards) fails to explain why the detailed arguments presented in writing by the appellant (applicant) in support of the allowability of the requests filed on 28 July 2020 are not convincing.In fact in the relevant passages of the decision the examining division does not address or rebut these arguments in any way, but simply asserts the contrary.
EPO
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/08/t-043121-discretion-under-rule-1373-epc.html
