T 382/10 – The Last Word

The applicant filed an appeal after the Examining Division (ED) had refused his application.

The relevant facts of the first instance proceedings are as follows:

In reaction to a summons to oral proceedings (OPs) before the ED, the applicant filed a main request and two auxiliary requests, and commented on the objections of lack of inventive step.

During the OPs, an objection under A 123(2) was raised against all pending requests. The ED invited the applicant to file a new request.

The applicant inserted a new “first auxiliary request” but maintained the other requests.

The ED was satisfied that the first auxiliary request overcame the objections. A substantive examination of inventive step followed. At the end of the discussion of inventive step of claim 1 according to the first auxiliary request, the ED interrupted the OPs in order to deliberate. According to the minutes of the OPs, the chairman announced “that a decision on the four requests on file will likely be taken after the break”. After the break, the chairman announced the decision that the application was refused according to A 97(2).

The Board found the ED to have committed a substantial procedural violation:

[2.1] In the statement setting out the grounds of appeal […], the appellant argued that the statement in the minutes that the chairman of the ED announced that a decision on the four requests on file would likely be taken after the break “cannot be confirmed by the representative as it was not heard”. However, 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 OPs (see R 11/08 [16]).

[2.2] In the statement setting out the grounds of appeal […], the appellant went on to argue that such a statement “could not have been expected to be made at this time”. The appellant stressed that apart from the introducing remark that all requests had the same problem with A 123(2), an objection under A 123(2) had been discussed only with regard to the main request, however not with regard to the rest of the pending auxiliary requests, i.e. after filing a new first auxiliary request during OPs the second and third auxiliary requests. This could not be considered to be a full discussion of all subsequent requests. The board notes that the discussion of the objection under A 123(2) is reported in the minutes […]. In particular […] reference is made to “the three requests” or “the first auxiliary request”. Therefore, the board is not convinced that the objection under A 123(2) was not discussed with respect to the first and second auxiliary requests.

[2.3] From the written decision […] it is understood that the main request, the second auxiliary request and the third auxiliary request were considered not to fulfil the requirements of A 123(2), whereas the first auxiliary request was considered to fulfil the requirements of A 123(2) but not those of A 56 EPC 1973. This clearly shows that the applicant’s amendments made during OPs did overcome the objection raised at the beginning of the OPs by the chairman.

[2.4] Any party has to be prepared that a new objection may be raised by the ED during OPs in reaction to amendments to the claims made by the applicant in reaction to the summons for OPs. The ED should give the party adequate opportunities to react to such a new objection during the course of the OPs. In fact, the ED did so when it announced that it would exercise its discretion under R 137(3) to consent to the filing of a new request if the representative wished to do so […].

In reaction to this statement, the applicant filed an amended request, which was introduced into the proceedings as first auxiliary request. Since the amendments were considered to overcome the objections under A 123(2) with respect to the main request, compliance with the provisions of A 56 EPC 1973 was discussed. At the end of the discussion the ED announced that a decision on the four requests might be taken. After deliberation it announced the final decision. This implies that the ED considered the four requests to be the final requests.

[2.5] The appellant in the statement setting out the grounds of appeal said that these four requests were not its final requests and pointed out that “before the last break, the ED did not ask the usual question whether the Applicant has any further submission or request, but did then immediately refuse the application at a time where this could not have been expected.”

[2.6] The board considers it to be common practice that a party being confronted with a new objection which is raised with respect to several requests during OPs first tries to overcome this objection by dealing with a single request only (here the main request). This is a sensible approach in the light of procedural economy and avoids filing multiple versions of all requests during OPs. Thus, the board judges that the appellant did not consider the second and third requests as final requests. On the other hand, the minutes fail to provide an indication that the final requests had been established before the ED deliberated and made the final decision.

[2.7] A 113(2) EPC 1973 requires the EPO to examine an application only in the text which the applicant has submitted or approved. In cases in which a request of a party is considered unclear, it is the duty of the deciding body to ask for clarification before deliberation (see decision of the Enlarged Board of Appeal R 14/10 [6.1]). To avoid any misunderstanding, in particular when requests are amended during OPs, the ED should clarify the final requests before pronouncing its decision at the conclusion of OPs. In accordance with prevailing case law, (see e.g. T 666/90, T 552/97 and T 1439/05), the fact that the final requests were not established contravenes the provisions of Article 113(2) EPC and is considered a substantial procedural violation.

[3] The substantial procedural violation requires that the decision under appeal be set aside and justifies the reimbursement of the appeal fee according to R 67 EPC 1973 (applicable here, see J 10/07 [7]).

Pursuant to Article 11 RPBA, a board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first-instance proceedings, unless special reasons present themselves for doing otherwise. The board is not aware of such special reasons in the present case. With the appeal proceedings, all requests have been amended except for the fourth auxiliary request which corresponds to the former first auxiliary request before the first instance. The other present requests have been amended in different ways such that each of them comprises combinations of amended features which have not yet been examined by the department of first instance. Since the board is bound by the order of the requests submitted by the appellant, and the first instance has not carried out a complete examination of the requirement of an inventive step for the subject-matter of the second and the third auxiliary requests, which are the basis for the present second and the third auxiliary requests, the board is exercising its discretion under A 111(1) EPC 1973 to remit the case so that a decision not vitiated by substantial procedural violations can be made by the first instance and so that the appellant does not lose an instance before the EPO.

The appellant requested grant of a patent on the basis of the main request or the auxiliary requests. However, as stated in decisions T 42/90 [5] of the reasons and T 315/92 [5] of the reasons, the decision to remit the case to the first instance is not to be considered as being adverse in substance to that party, so that no OPs before the board need to be appointed. With the remittal to the first instance for further prosecution, the party still has the possibility of appealing against the final decision on the substance, possibly with OPs.

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