T 888/07 – Revival

This decision also deals with an alleged substantial procedural violation committed by the Examining Divison (ED):

[8.1] The appellant argued that after non-admission of the main request filed during oral proceedings, the version previously standing would have remained in the previous state and was still pending. The ED therefore would have had to give reasons according to R 68(2) EPC 1973 for this request. Failing to do so constituted a substantial procedural violation.

[8.2] This point of view is, however, not correct. By replacing a request, the former request is no longer pending.

According to R 86(3) EPC 1973, last sentence, no further amendment may be made without the consent of the ED. Also according to the case law an ED has a discretion to allow amendments until the issue of the decision to grant (see G 7/93 [order 1] and G 12/91). If a request for amendment is refused, the ED must inform the applicant of the reasons for not admitting the amendments such that the applicant has the opportunity to comment on them in order to satisfy the right to be heard according to A 113(1). If the applicant maintains his request for amendment, the application has to be refused under A 97(2), since there is no text which has been approved by the applicant and allowed by the ED (see A 113(2), decisions T 647/93; T 946/96 and T 237/96).

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 or the proprietor of the patent. In the present case the ED refused to consent to the introduction into the procedure of the claims submitted during oral proceedings, which had been put forward in substitution for the claims on file before.

Deciding to refuse an application on the grounds that the claims previously on file were not allowable would have contravened A 113(2) EPC 1973, since these claims were no longer pending. If the ED refuses consent to the latest amended set of claims under R 86(3) EPC 1973 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, since the appellant did not even mention that the claims filed on 12 December 2006 and/or the claims filed on 29 July 2005 constituted auxiliary requests.

[8.3] As can be seen from the minutes of the oral proceedings […], the chairman explicitly brought the legal situation and the corresponding consequences to the attention of the appellant's representative, who did not present any observations […] and apparently did not react according to his intentions (e.g. by referring to the auxiliary requests believed to be pending or by filing a further request). The appellant did not question the correctness of the minutes after they were sent to the party and before the appeal proceedings. The correctness of the minutes is therefore not formally in doubt and the board has to consider the minutes as correctly reflecting the course of the oral proceedings (see R 11/08 [16]). The appellant's representative could be expected to be aware of the legal situation, in particular after having actually been warned of the legal consequences.

[8.4] Therefore, the board comes to the conclusion that the applicant's right to be heard (A 113(1) EPC 1973) has been observed. In the board's view, the procedural issues referred to by the appellant do not constitute a substantial procedural violation which would justify the reimbursement of the appeal fee.

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