This is an examination appeal.
The Examining Division (ED) objected to the claims as filed under A 84 and A 56.
The applicant filed new sets of clams. Together with its objections regarding this claims, the ED summoned the applicant to oral proceedings (OPs) to be held on November 30, 2011.
On October 31, 2011, the applicant filed a new set of claims to “form the sole request at the start of the OPs”.
There was a video-conference on November 15 in the course of which the ED decided to allow the request.
On November 23, however, the applicant withdrew its request for OPs and submitted a “redrafted main request”. This is when things seriously screwed up.
The ED then sent (by fax) a communication informing the applicant that a refusal was to be expected. This communication also contained the following paragraph:
The applicant then informed the ED that it would not attend the OPs.
The OPs were cancelled and the impugned decision was issued on December 29. The decision was based on the request filed on October 31.
The Board of appeal found that the applicant’s right to be heard had been violated:
 The appellant contests the decision of the ED essentially for both procedural and substantive matters. The latter objections become relevant only if the first were to be held unfounded. Thus, the alleged infringement of the appellant’s procedural rights will be considered first.
The appellant’s submissions and arguments in this context involve four different aspects, which are to some extent interrelated with each other, i.e.
(1) that the ED infringed the principle of party disposition by taking its decision on the (former) request submitted by the appellant on 31 October 2011 (A 113(2)),
(2) that the ED gave no substantive reasons for its opinion expressed in its letter of 25/30 November 2011 regarding the patentability of the set of claims filed on 31 October 2011 and of claim 1 filed on 23 November 2011,
(3) that the ED, before taking a decision on the admissibility of the last amendments, failed to give the appellant an opportunity to reply to its opinion that the latter set of claims was of an unacceptable “diverging sort” (A 113(1)), and
(4) that, in this last respect, the ED exercised its discretion according to R 137(3) not only unreasonably, but also applying the wrong principles.
 In consideration of the first aspect, it needs to be noted that the appellant has filed its last version of claim 1 with its letter of 23 November 2011. This claim was presented as “new main claim” and “redrafted main request” that the appellant considered to meet all objections made by the ED in its communication of 26 May 2011. Furthermore, the appellant expressly requested the “grant of a patent on the basis of the redrafted main claim filed with this letter” with a description to be adapted later.
It is reasonable to interpret this letter and request as the clear intention of the appellant to have only this new main request examined by the ED. In other words the appellant agreed only to the text submitted with this letter.
Unlike the situation where an applicant submits one or more auxiliary requests, submitting a new main request (possibly followed by other - new - main requests in the course of the proceedings) automatically leads to the replacement and - in legal terms - withdrawal of (any) previous main request(s). This notion is a direct result of the fundamental procedural principle of party disposition (ne ultra petita) that is guaranteed by A 113(2) (see Benkard-Günzel/Beckedorf, EPÜ, 2nd edition 2012, vor Art. 106-112, n° 25 et seq.).
Consequently, the earlier request with the set of claims filed on 31 October 2011 was no longer valid but - at least as regards claim 1 - was replaced by the subsequent request of 23 November 2011. As a result, the previous agreement of the appellant with that earlier text was conclusively withdrawn.
The fact that the ED did not agree to the last amendment of claim 1 of the main request as filed with the appellant’s letter of 23 November 2011 but held it to be inadmissible for various procedural and substantive reasons (as set out both in its communication of 25/30 November 2011 and in the addendum to the decision under appeal) could not and did not “revive” or “re-establish” the finally withdrawn previous main request(s).
The conclusion of the ED as to the inadmissibility of the main request of 23 November 2011 merely could have led to a state of the examining proceedings where no valid text agreed to by the appellant was present to take a decision on and, therefore, to a refusal of the application under A 97(2) for this particular reason alone (see T 647/93; T 946/96; T 237/96; T 690/09).
By contrast, the ED based its decision explicitly on the earlier set of claims that was submitted on 31 October 2011, irrespective of the subsequent (automatic) withdrawal by the appellant when filing a new main request on 23 November 2011. Hence, the ED examined and decided upon a request that was (no longer) part of the proceedings and, thus, upon a text to which the appellant (no longer) agreed to in the sense of A 113(2).
The provision of A 113(2) marks a fundamental procedural principle and is of such prime importance that any infringement of it must be considered to be a substantial procedural violation (see T 1854/08 [2.1]; T 690/09 ).
 In addition to this infringement of A 113(2), the decision under appeal suffers from a further procedural defect in view of A 113(1) and the appellant’s right to be heard.
By a first facsimile letter of 25 November 2011 (i.e. the pre-sent communication dated 30 November 2011) the appellant was informed that its submission of 23 November 2011 was late filed and moreover deemed by the ED to be inadmissible for procedural (R 137(3)) and substantive (A 84, A 123(2) and A 54) reasons. This fax contained the form 2001, setting a time limit of four months to reply.
This form, with its time limit, was invalidated by a second fax of 25 November 2011, which otherwise contained the same communication. In both faxes the date of the OPs was maintained.
After the applicant’s announcement, dated 28 November 2011, that it would not attend these OPs the appellant was informed by fax of 29 November 2011 that the OPs were cancelled and that the proceedings were continued in writing.
However, by cancelling the time limit the appellant was not given any opportunity to present its comments to overcome the negative position expressed in said communications against the claims filed with letter of 31 October 2011.
Moreover, the appellant had to gather from both communications that ended with the observation by the ED that a refusal of the application under A 97(2) was to be expected, that it was no longer possible to convince the ED of the contrary. This follows from also the fact that the refusal to admit the newly filed request was not presented as a provisional opinion of the ED to prepare a discussion but as a decision which could not be overturned. This is all the more so in view of the statement […] that “no further amendment may be made prior to the OPs” which were, however, afterwards cancelled. The only conclusion one can take from the above is that the proceedings were continued in writing but that the appellant had no right to react to the substantive and procedural issues raised by the ED.
This contravenes A 113(1) that clearly provides that the decisions of the EPO may only be based on grounds on which the parties concerned have had an opportunity to present their comments.
 Since the infringement of A 113(1) and (2) in itself already justifies that the decision under appeal is set aside the Board just briefly adds some summary observations concerning the appellant’s further objections.
[6.1] The objection under A 113(1) that the ED gave no substantive reasons for its opinion expressed in its faxes of 25 November 2011 regarding the patentability of the set of claims filed on 31 October 2011 and of claim 1 filed on 23 November 2011 is more an objection under R 111(2) (insufficient reasoning) than a question of the right to be heard. Further, it is not well-founded. The reasons given in these communications are to be read together with the various earlier communications to which the ED expressly refers. The appellant could derive from those communications straightforwardly what kind of objections the ED had against the various versions of the requests, and the appellant obviously reacted to it by submitting an amended version of claim 1 as a new main request with its letter of 23 November 2011.
[6.2] The appellant’s further objection that the ED exercised its discretion wrongly as to the inadmissibility of the last amendments of 23 November 2011, is also not well-founded.
R 137(2) gives the applicant a right to amend the application once on its own volition after receipt of the first communication (here the first communication dated 17 November 2005). R 137(3), last sentence, EPC provides that no further amendment may be made without the consent of the ED. According to the case law of the Boards of Appeal, an ED has discretion to allow amendments until issue of a decision to grant (see G 7/93 [2.2-3]).
After the first amendment, filed with letter of 15 May 2006, the appellant had another two opportunities to file further amendments, with letters of 2 January 2009 and 31 October 2011, the latter in time to comply with the ultimate date set for the OPs on 30 November 2011. Then, only one week before the OPs another amendment was filed.
If a request for amendment is refused, the ED must inform the applicant of the reasons for not admitting the amendments in order to satisfy the right to be heard according to A 113(1). This the ED did with its faxes of 25 November 2011.
In general terms, the way in which the ED should exercise its discretion to allow an amendment of an application will depend upon the circumstances of each individual case and on the stage of the pre-grant procedure which the application has reached (see G 7/93; T 690/09 ; T 309/09 [6.1]). A Board of Appeal reviews this exercise of discretion not in the form of how it would have decided in the case, but whether it was exercised according to the wrong principles, without taking into account the right principles or in an unreasonable way.
In this respect, the Board has to take recourse to the Guidelines for Examination, version April 2010, chapter C-VI, 4.7 and E-III, 8.6.
The Board notes in the first place that the applicable Guidelines do not support the concept of converging claim sets being a requirement for allowing amendments or conversely, a diverging claim set not being acceptable.
This appears to be acknowledged by the decision appealed, since the ED refers to two Board of Appeal decisions, T 1685/07 and T 745/03, for this concept.
This criterion is acknowledged in appeal proceedings (e.g. T 1685/07 [6 et seq.]; T 745/03 [2.2]; see Benkard-Günzel/Beckedorf, Art. 110, n° 102). Apart from the fact that these decisions particularly apply to the situation where a patent proprietor submits a plurality of auxiliary requests in addition to a main request in opposition appeal proceedings, it needs to be stressed that its underlining justification is to be found in the efficiency of these appeal proceedings, the latter being of a judicial nature in contrast to the purely administrative character of the proceedings before e.g. the ED or the Opposition Division. This fundamental distinction eo ipso makes the unqualified application of this criterion by the so-called first instance of the EPO questionable.
However, the other criteria applied in the impugned decision do show that the ED exercised its discretion correctly:
(a) the amended claim was clearly filed late (one week before the OPs instead of one month), see Guidelines E-III, 8.6, second and third paragraphs, the subject of the proceedings not having changed,
(b) the amended claim did not overcome the existing objections and gave rise to new objections, see Guidelines E-III, 8.6, fifth paragraph, and C-VI, 4.7, fourth paragraph,
(c) the appellant has had a fair number of opportunities (three in total), see Guidelines, C-VI, 4.7, fifth paragraph,
(d) procedural economy was at stake, Guidelines C-VI, 4.7, sixth paragraph, where the claim was not only considered to go back to the start of the examination proceedings, but even beyond that by not having the limitations of original claim 1.
Remittal of the case to the ED and reimbursement of the appeal fee
 Notwithstanding the appellant’s request that the case only be remitted to the ED if the Board considers that the subject-matter of claim 1 cannot form the basis for the grant of the European patent, the Board, in exercising its discretion under A 111(1), 2nd sentence EPC and Article 11 RPBA, finds that the fundamental deficiencies apparent in the examination proceedings, including the decision under appeal, are of such gravity that the case is to be directly remitted to the ED for further prosecution without the Board dealing with the substance of the case.
 Under the circumstances of the present case, the Board considers the requirements of R 103(1)(a) to be met and, accordingly, the appeal fee shall be reimbursed.
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