Monday, 9 April 2012

T 599/07 – Fatal Dependence

The present appeal was filed against the refusal of the application under consideration. According to the Examining Division, the subject-matter claimed in the sole request lacked inventive step and claim 5 was not clear.

Together with the statement of grounds of appeal, the appellant filed a new main request containing three independent claims and several dependent claims.

The oral proceedings (OPs) were held in the absence of the appellant.

The Board found the main request to be inadmissible:

[1] Except for the addition of dependent claims 2 and 6 to 8, the present main request is identical to the set of claims filed with a letter dated 17 September 2003, on which the decision under appeal is based. All independent claims of the present main request (claims 1, 5 and 9) literally correspond to the independent claims (claims 1, 4 and 5) of the set on which the decision under appeal is based.

The appellant did not give any explanation for the introduction of new dependent claims. The board concludes that if the independent claims are not amended, the introduction of new dependent claims into a given set of claims cannot overcome the grounds for refusal. The board further notes that R 137(2) does not apply, as an amended set of claims had already been filed with a letter dated 17 September 2003.

As a consequence, the main and sole request is not admitted into the proceedings (Article 12(4) RPBA together with R 137(3)).

[2] According to A 113(2), the EPO shall decide upon an European patent application only in the text submitted to it, or agreed, by the applicant for a patent. In view of the fact that the sole request was found inadmissible, there is no text of the patent application on the basis of which the board could consider the appeal and the application could proceed to grant. […]

The appeal is dismissed.

I find this decision tough on the appellant, but I imagine the appellant’s absence from the OPs did not help its case. As the addition of independent claims was already raised in the Board’s summons to OPs, the appellant should have come back to the claims as refused by the ED. I trust the Board would have allowed such an amendment even during the OPs.

For a similar (later) case in opposition appeal proceedings, see here.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.