Monday, 23 December 2013

T 158/12 – No Switching

Board member Gianciotto is about to draw the Article 12(4) RPBA sword  ...

This is an examination appeal.

Board 3.2.06 had to deal with the question of whether the applicant could be allowed to switch from one invention to the other.

[2.1] Claim 1 corresponds to originally filed claim 8 which formed part of the second invention during search. Claim 1 with this exact wording was withdrawn during the examination proceedings after having been submitted with the applicant’s response of 6 May 2011.

[2.2] According to Article 12(4) RPBA, the Board can hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings. In order to decide how to exercise this discretionary power, the Board reviewed the course of the examination proceedings.

[2.3] When entering the European phase of the proceedings, the appellant chose to base the prosecution of the application on the first invention and submitted (with letter of 25 March 2009) amended claims 1 to 10 wherein claim 1 further specified the oxygen storage component. The system of claim 8 was defined as comprising the article according to claim 1 and an on-board diagnostic system. That it was the applicant’s own volition to pursue the first invention was emphasized by the arguments submitted therewith that the inventive concept related to the use of a sufficient amount of an oxygen storage component having a pre-selected deactivation temperature range that coincided with a deactivation temperature range at which the hydrocarbon conversion of the precious metal component decreased below a pre-selected value, which concept underlies the first invention. Thus, the appellant deliberately chose the first invention to be the subject of examination.

[2.4] For this reason, the Board concludes that the first invention was chosen voluntarily for being the subject of examination and therefore, a claim directed to the second invention is not to be examined in this application. Since the main request relates to the second invention, the request is therefore not admissible.

[2.5] The appellant’s view was that there was no Article or Rule in the EPC which would prevent the applicant from changing from one invention to another – if they were searched – during examination.

[2.6] Contrary to such view, the Board considers that the Articles and Rules present in the EPC however form a statutory system which however, read together, clearly leads to this conclusion:
  • A 82 requires the European patent application to relate to one invention only or to a group of inventions so linked as to form a single general inventive concept.
This is a basic principle underlying the EPC.
  • R 137(2) gives the applicant a right to amend the application once of its own volition after receipt of the first communication. According to R 137(3), no further amendment may be made without the consent of the Examining Division (ED).
In such a way an application which includes various (groups of) inventions can be pursued on the basis of the desired (group of) invention.
  • A 76 states the possibility to file divisional applications.
In such a way the further (groups of) inventions can be pursued.
  • A 94(1) states that the request for examination of the European patent application shall not be deemed to be filed until “the” examination fee has been paid.
It is only possible to pay one fee for the examination.

[2.7] Hence, there is no provision which would allow the payment of multiple examination fees for a patent application. This is also in line with the possibilities to
  • either argue in the examination proceedings that unity exists – which should be done in reply to the first communication to the ED;
  • or to file divisional applications which allow the principle of one invention – one examination (and one examination fee for one examination proceedings) to be maintained.

Thus, it is clear that only one examination is to be carried out in respect of one application – and in respect of one examination fee being paid.

[2.8] Accordingly, after having chosen one invention (or one group of inventions) to be the subject of examination, this choice cannot be altered once examination of that invention has commenced.

[2.9] This systematic approach based on the statutory provisions of the EPC is, contrary to the appellant’s view, confirmed in G 2/92. It is true that opinion G 2/92 primarily concerns the non-payment of further search fees and states in its Headnote that “an applicant who fails to pay the further search fees for a non-unitary application … cannot pursue that application for the subject-matter in respect of which no search fees have been paid. Such an applicant must file a divisional application in respect of such subject-matter if he wishes to seek protection for it.” The opinion is based on the principle “that in order to proceed to grant a European patent application is required to contain claims relating to one invention only” (Reasons, item 2). However, the Enlarged Board’s opinion goes on further and additionally considers the examination stage and sets out (Reasons, item 2, second paragraph) that “At the examination stage, having regard to the requirement of unity of invention and the fact that only one examination fee can be paid for each application, clearly only one invention in each application is to be examined for conformity with the patentability and other requirements of the EPC.”
[2.10] Thus, although the appellant cited G 2/92 to support its view that this opinion exclusively concerned the prohibition of pursuing a non-unitary application in respect of subject-matter in respect of which no search fees had been paid and did not concern the examination procedure and subject-matter for which the search fees have been paid, the scope of G 2/92 extends – as explained supra – beyond the search stage in highlighting the principle of one fee for one procedural step also at the examining stage. Hence, the appellant’s view that the examination of an application could be based on more than one invention is not supported by this opinion of the Enlarged Board of Appeal.

[2.11] Further, the appellant was also of the view that the subject-matter defined in claims 1 and 8 as originally filed anyway concerned a single inventive concept since one independent claim (claim 8) encompassed the other (claim 1) based on the premise that claim 8 as filed inherently had all the features of claim 1, in particular since the deactivation was allegedly present as a material characteristic. Additionally, according to the appellant, claims 1 and 8 as originally filed afforded alternative solutions to the problem of the invention which might not be covered by a single claim in accordance with R 43(2)(c), and therefore did not contravene the provisions of unity (A 82).

[2.12] Such view cannot be accepted however, since when assessing the inventive concept underlying the subject-matter of claim 1 as originally filed, it is related to a diesel engine exhaust treatment article and a selected oxygen storage component defined in relation to a precious metal component. Claim 8 on the other hand is related to an exhaust system, not just the exhaust treatment article, and does not specify any particular characteristics of the components as in claim 1, and in fact not even a precious metal component. Likewise, claim 8 requires a pair of lambda sensors, whereas claim 1 puts no such restriction on the system. It is thus evident that one claim does not encompass the other. This was indeed why two search fees were requested and paid.

[2.13] The appellant further argued that it was unable to maintain the (present) main request during examination, because the ED had stated the application would then be “immediately” refused. Reference was made to the communication of 1 June 2011.

[2.14] The Board disagrees. Although the ED stated in the above referenced communication (which was issued in preparation of the oral proceedings) that “In the absence of any valid claims, the applicant has to count on an immediate refusal” as a consequence of pursuing the second invention, the ultimate refusal of a request – based on a reasoned decision – provides an appropriate basis for an appeal.

[2.15] There were anyway several possibilities of defending such a request in the first instance proceedings in both its written phase and also during the oral proceedings. The likelihood of receiving a refusal may indeed have been high, but the applicant’s withdrawal of the request prevented the ED from taking a decision on that request. The request could have been filed as an auxiliary request for example.

[2.16] For these reasons, the main request is not admitted into the proceedings as it should have been presented in the first instance proceedings such that it became the subject of a decision. Due to these reasons, the Board exercised its discretion under Article 12(4) RPBA not to admit the request into the proceedings.

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

The file wrapper can be found here.