Thursday, 4 March 2010

T 1351/06 – On The Importance Of Rank And Order

In this case the applicant had filed amendments in response to a notification under R 51(4) EPC 1973 and had approved the text agreed upon by the Examining Division (ED) only as a subsidiary request. The ED granted the patent on the basis of this subsidiary request and informed the applicant that its main request was rejected, without any further justification.

[…] Having received the notification pursuant to R 51(4) EPC 1973, the appellant has filed a main request consisting in amendments, filed the translations of the amended claims and paid the fee for grant and publication in good time, pursuant to R 51(5) EPC 1973. It has approved the text proposed by the ED, but only as an auxiliary request. This means that the appellant has not approved without any reservation the text notified pursuant to R 51(4), but, quite to the contrary, it has introduced a new request of higher rank with respect to the order of preference. It is in conformity with the practice of the EPO that at the stage of the examining proceedings the applicant can file a main request and one or more auxiliary requests in view of amending its application (see T 79/89, T 169/96, T 1105/96 and Legal Advice 15/05). The Board does not see any reason why the applicant could not do so in response to a notification pursuant to R 51(4), in particular in a situation where, as here, the notification was not preceded by a notification pursuant to A 96(2) EPC 1973 and, therefore, is a “first notification” within the meaning of R 86(3) EPC 1973.

An auxiliary request is a request that applies only if the main request or the auxiliary request of higher rank is not allowed (see T 153/85, T 79/89, T 169/96 and T 1105/96). In accordance with A 113(2), the EPO has to stick to the requests of the applicant. When one or more auxiliary requests are filed in addition to the main request, the ED has to examine these requests in the order in which they have been presented. Before it can decide on an auxiliary request, the ED has to examine the main request and all the auxiliary requests preceding said auxiliary request and decide on them (see T 484/88, T 169/96, T 1105/96). In the present case, the main request has not been withdrawn and therefore remains pending. It follows from what has been said that the decision to grant the patent on the basis of the auxiliary request is contrary to A 113(2). Therefore, the appellant is adversely affected within the meaning of A 107. […] The appeal is admissible. [2]

[…] A 113(2) being a fundamental principle governing the proceedings and forms part of the right to be heard. It is of utmost importance, which means that any violation of this provision, even if it results from an erroneous interpretation of the request, has to be considered a substantial procedural violation (see T 647/93). [3.2]

[…] R 51(6) EPC 1973 requires that if the ED does not consent to an amendment requested under R 51(5) EPC 1973, it shall, before taking a decision, give the applicant an opportunity to submit, within a period to be specified, his observations and any amendments considered necessary by it, and, where the claims are amended, a translation of the claims as amended. This way of proceeding preserves the general right of the applicant to present comments in conformity with A 113(1).

There is no reason whatsoever to deviate from this way of proceeding if the amendments are filed as main request and the approval of the text proposed by the ED only as auxiliary request. In decisions T 1181/04 and T 1255/04 it has been said that in the case where the applicant has filed a main request and one or more auxiliary requests and where the ED has the intention of allowing only one of the auxiliary requests, the notification pursuant to R 51(4), which specifies on the basis of which text the ED is willing to grant a patent, has to be accompanied by the grounds of rejection of the requests that precede it by order of preference. This notification also has to mention expressly the possibility of maintaining the rejected auxiliary requests, in order to remind the applicant of the possibility to request a written decision that may be appealed. These principles also have to be applicable when the main request and one or more auxiliary requests are filed for the first time within the period specified under R 51(4) if the right of the applicant to appeal against the rejection of preceding auxiliary requests is to be safeguarded.

As the appellant had requested amendments as main request and had fulfilled all the requirements of R 51(5), the ED had to tell it the grounds on which the preceding request was rejected and had to give it the possibility of presenting its comments before taking a decision, in conformity with R 51(6). The ED would have had to mention the admissibility of the auxiliary request and the possibility of maintaining the rejected main request. [3.3.1] 

To read the whole decision (in French), click here.