T 421/09 – Don’t Be So Quick To Replace

The present decision shows that in appeal proceedings it may be dangerous to replace existing requests by late filed requests.

The Examining Division had refused the application. The applicant filed an appeal. During oral proceedings (OPs) before the Board it filed a new main and a new auxiliary request to replace all requests on file.

The Board of appeal uses its discretion under Article 13(1) RPBA not to admit these late filed requests and then pursues:

[4] By at the OPs expressly replacing all requests then on file with the present main and auxiliary request, the Appellant has effectively withdrawn the previous requests. (This situation contrasts with one in which requests are filed as subsidiary to those already on file). As the Board does not admit the replacing requests, there is no longer a valid text of the claims submitted by the applicant as appellant upon which the EPO can decide upon the European patent application, A 113(2). Such a valid text is a fundamental procedural prerequisite for the Board to be able to review the decision under appeal.

Absent a valid text the appeal must fail.

Now perhaps there was not much hope for the replaced requests either, but if the applicant had added new requests to the requests on file rather than replacing the latter, the Board would at least have had to deal with those requests.

To read the whole decision, please click here.