T 1178/08 – Not Obliged

Another case showing that you really have to think thoroughly which requests you present before the first instance – even in ex parte cases.

[2.1] In accordance with A 123(1) in conjunction with R 137(2) and (3), an applicant is to be given at least one opportunity to amend the application of his own volition. No further amendments may be made without the consent of the examining division (ED). The Convention and the Implementing Regulations do not contain explicit provisions concerning the admissibility of amendments in appeal proceedings. R 66(1) EPC 1973 sets out that the provisions relating to proceedings before the department which has made the decision from which the appeal is brought shall be applicable mutatis mutandis in such a case. Therefore, an appellant is not entitled, as a matter of right, to present amendments of his own volition at the appeal stage, but as a matter of discretion to be exercised by the board. Articles 12 and 13 RPBA set out the provisions governing the basis of appeal proceedings and amendments to a party’s case which are binding upon the boards of appeal (Article 23 RPBA).

[2.2] In particular, Article 12(4) RPBA reads as follows:

“Without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings, everything presented by the parties under (1) shall be taken into account by the Board if and to the extent it relates to the case under appeal and meets the requirements in (2).”

In the paragraph above, (1) and (2) refer to Articles 12(1) and 12(2) RPBA, respectively.

[2.3] In the board’s view, the above wording makes clear that the board in an ex parte case has discretion over whether or not to admit requests which could have been presented to the first instance, but were not. It must exercise that discretion having regard to the particular circumstances of the individual case.

[2.4] The board considers that this view is consistent with the view taken in previous decisions in the different context of inter partes cases (see, for instance, R 10/09 [3.2]; T 144/09 [1.14] and R 11/11 [9], which rejected the petition for review of T 144/09 as clearly unallowable; and T 1007/05 [3]).

[2.5] The board is aware that amended claims filed together with the statement of grounds of appeal have in many cases been admitted into appeal proceedings if they constituted a legitimate reaction to the reasoning underlying the appealed decision. Indeed, such amended claims filed with the statement of grounds of appeal may achieve the goal of “a more defined and controlled initial phase of proceedings” (see T 1007/05 [3]), in particular if they serve to avoid later amendments. But this does not mean that the board is obliged to admit amended claims solely because they were filed with the statement of grounds of appeal.

[2.6] In the present case, the applicant had been given several opportunities to file amended claims in the first-instance proceedings. In particular, as far as A 56 EPC 1973 was concerned, the decisive issue in the communications and replies, as well as in the summons to attend oral proceedings before the ED, was whether the only difference over the closest state of the art, namely the step of creating lab meta data including lab-generated image identifiers (see feature d) of claim 1) was sufficient to confer inventive step on the claimed subject-matter. With respect to claim 1 the applicant chose to maintain in substance, and in the end also in form, claim 1 as originally filed […]. No auxiliary requests were filed. Instead the applicant tried to convince the ED with arguments that the subject-matter of claim 1 involved an inventive step. In reply to the summons to oral proceedings which already set out the essential reasons for the later decision, the applicant merely requested a decision according to the file. Since the applicant’s arguments did not convince the ED, the application was ultimately refused.

[2.6.1] Thus already after the first communication of the ED the applicant was aware that the application might be refused for lack of inventive step if his arguments concerning this decisive issue reflected in feature d) of claim 1 did not convince the ED. Furthermore, the detailed reasoning concerning A 54 and A 56 EPC 1973 given in the decision under appeal is almost verbatim the same as that given in the summons to attend oral proceedings. Under these circumstances, in the board’s view, the amended claims filed with the statement of grounds of appeal are not a reaction to the reasoning underlying the appealed decision. Instead they are the result of the applicant’s decision no longer to pursue claim 1 as originally filed and to submit a fresh case to the board of appeal.

[2.6.2] This assessment is confirmed by the fact that the statement of grounds of appeal gives no indication that or how the amended claims are a reaction to the reasoning underlying the appealed decision. Nor does it indicate why the amended claims were not submitted to the ED even though they could have been submitted at the latest in reaction to the summons to attend oral proceedings, in which the applicant had been informed of the ultimately relevant reasoning.

[2.6.3] It is also confirmed by the wording of the amended claims. Namely, these claims do not further specify feature d) of claim 1, which reflected the decisive issue (in the context of the objections relating to A 54 and A 56 EPC 1973) discussed in the first-instance proceedings. In particular, the wording of claim 1, when read in the light of the statement of grounds of appeal and the decision under appeal, does not make clear that the (or which) amendments made to claim 1 are in substance caused by the objections concerning feature d) of claim 1, as given in the decision under appeal. Instead, amended claim 1 has an additional feature f) specifying separate and distinct studio-generated image identifiers which are not related to the lab meta data including lab-generated image identifiers […].

[2.6.4] In the board’s view, the applicant should have submitted these (or other suitably) amended claims in the first-instance proceedings. By presenting its sole and amended request only in appeal proceedings the applicant is making it impossible for the board to examine the contested decision. In addition, the new claims necessitate further investigations and give rise to further objections (as set out in the communication accompanying the summons issued by the board) to which the appellant did not reply in substance. This is contrary to the main purpose of ex parte appeal proceedings. Namely, “[p]roceedings before the boards of appeal in ex parte cases are primarily concerned with examining the contested decision” (see G 10/93 [4]). The appellant has not submitted any arguments as to why the present case is an exception justifying that the board carry out a full examination of the application as to patentability requirements. Nor does the board see any reason why the present case might be such an exception.

[2.7] In view of the above the board has exercised its discretion under Article 12(4) RPBA by not admitting the claims filed with the statement of grounds of appeal into the appeal proceedings.

[3] Hence the decision under appeal cannot be set aside. […]

The appeal is dismissed.

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

The file wrapper can be found here.

NB: This case was also discussed on Le blog du droit européen des brevets.