T 346/11 – Don’t Change Your Mind

This is an appeal against the refusal of an application by the Examining division (ED), for lack of clarity.

Together with the statement of grounds of appeal, the applicant filed amended claims that overcame the clarity objections, but later filed a request corresponding to the request that had been refused by the ED. The Board did not like this approach:

[4.1] According to Article 12(2) RPBA, the statement of grounds of appeal shall contain a party’s complete case. It shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed or amended. The provision of Article 13(1) RPBA [is] also relevant in this context […].

[4.2] In the present case, the appellant requested, as a second auxiliary request, at the very end of the oral proceedings that the case be remitted to the first instance for further prosecution on the basis of the then main request filed on 7 May 2010, i.e. the request which is the subject-matter of the contested decision and was found not to meet the clarity requirements.

[4.3] The board considers it inappropriate for the appellant to accept (by filing amended claims with the statement of grounds of appeal) the objection of lack of clarity raised by the first instance and then to change its mind at an extremely late stage of the proceedings, requesting in fact that the board reverse the reasoning of the first instance on clarity, which had hitherto not been the subject-matter of the debate. It must be borne in mind that it is the duty of the appellant to define the scope of the appeal as set out in the above cited Article 12(1) RPBA. The appellant has the discretion to appeal against the decision only in part and to argue accordingly in the statement of grounds. However, a new request which changes the scope of the appeal, in particular if, as in the present case, it is not supported by any reasoning as to why the contested decision should be reversed and is submitted at a very late stage of the proceedings, cannot be admitted into the proceedings in accordance with Article 13(1) RPBA.

The second auxiliary request is thus not admissible.

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