T 690/09 – Don’t Wake The Dead (Without Consent)

[8] The appellant further complained that the decision under appeal was taken on the basis of claims that had not been approved in accordance with A 113(2) EPC 1973.

In the minutes the following statement is found after the chairman announced the decision not to admit the sets of claims filed on 8 September 2008:

“Consequently the latest admitted request filed by the applicant with the letter dated and received 07.07.2005 will be the basis for further discussion during the oral proceedings (OPs). After being asked by the chairman, the applicant confirmed that the main request and two auxiliary requests dated 08.09.2008 were maintained. The applicant was informed that this decision and its reasoning will be furnished to him in written form, which may be subject to appeal” (emphasis added).

The appealed decision was finally taken on the basis of the set of claims filed with letter of 7 July 2005 with further minor amendments.

A 113(2) states that the EPO shall consider and decide upon the European patent application or the European patent only in the text submitted to it, or agreed, by the applicant for or proprietor of the patent. Here the examining division (ED) refused to consent to the introduction into the procedure of the claims submitted on 8 September 2008, which had been put forward in substitution for the claims put forward with letter of 7 July 2005, and then proceeded to discuss and refuse the claims of 7 July 2005 which were, at the time, not put forward by the appellant for consideration. Deciding to refuse an application on the ground that claims are not allowable contravenes A 113(2) if the applicant is no longer putting forward these claims, and amounts to a substantial procedural violation (see e.g. T 946/96 [3]; T 647/93 [2.6]). If the ED refuses consent to the latest submitted amended set of claims under R 137(3) this does not automatically revive the previous set of claims that the ED had consented to consider, unless the applicant has indicated that he was relying on these as an auxiliary request. There was no such indication here. A question by the chairman on the status of the “old” requests would have been necessary. In contrast the applicant had to continue with the set of claims he wanted to replace.

The fact that those claims were further amended by the applicant later during OPs does not imply the applicant’s consent under A 113(2).

The correct procedure would have been to notify the applicant of the grounds for intending to refuse consent to admit the latest set of claims and to ask him whether he wanted a decision on that basis. If the applicant then maintained his request solely on the basis of these claims (as was the case - see the minutes), and any further arguments by the applicant did not persuade the ED to change its mind, then a decision should have been given in which the reasons for the refusal of consent under R 137(3) were stated, and the application was refused under A 97(2) and A 78(1)(a) on the basis that the application contained no claims to which the applicant had agreed.

Thus, the ED decided on sets of claims which were neither submitted, nor agreed by the applicant, in violation of Article 113(2). This provision is a fundamental procedural principle, being part of the right to be heard and is of such prime importance that any infringement of it must be considered to be a substantial procedural violation (see T 647/93 [2.6]).

To read the whole decision, you may click here.