CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 153/22 – Discussions with the applicant following a refusal cannot lead to the admissibility of a request when entering appeal

chat_bubble 0 comments access_time 4 minutes

EP 3 444 924 A1 relates to wireless power supply devices that transmit electric power wirelessly from a transmitter coil to a receiver coil.

Brief outline of the case

The ED refused the application for lack of N of the valid claims 1 and 9.  

The applicant appealed the refusal and filed a new MR when entering appeal.

Pursuant to Art 12(6) RPBA, the board did not admit the new MR. The refusal was thus confirmed.

The applicant’s point of view

The circumstances of the present case justified the admittance of the applicant’s sole request filed together with the statement setting out the grounds of appeal.

Hypothetical subject-matter involving the primary side of the wireless transmission only was discussed during the OP before the ED after it had been found that the subject-matter of the sole request pending before the examining division lacked N over the disclosure of document D8 or D9.

In the situation of OP the applicant’s representative was not sure how a request overcoming the ED’s objection under Art 123(2) could be formulated.

Only later during a discussion with the applicant did a solution become clear and the corresponding request was filed as sole request with the statement of grounds of appeal.

The applicant believed that the board would directly understand that this request considered the hint under point 8 of the minutes of the OP before the ED and was filed in order to conduct an efficient procedure.

The board’s decision

Contrary to the applicant’s arguments the board was not convinced that the circumstances presented can justify the admittance of the sole request.

Rather, the lack of N in the light of document D8 or D9 was already set out in the preliminary opinion of the ED.  

The board is thus not aware of any obstacle that could have hindered the applicant from filing the present request already during the proceedings before the ED.

Indeed it is apparent from the minutes of the OP before the ED that, following an in-depth discussion of the objections of lack of novelty based on D8 and D9, the applicant was given the opportunity to file further requests, but chose not to do so.

The fact that the ED had discussed hypothetical subject-matter with the applicant after it had concluded that its sole request was not allowable cannot be interpreted as circumstances which would allow the applicant to file an amended request only in appeal proceedings, instead of during the OP before the ED.

Further, nothing seems to have hindered the applicant from requesting more time for the preparation of an additional request before the ED, or from asking the latter for further explanation of their opinion.

The board thus considered the discussion of such hypothetical subject-matter during the OP before the ED to be irrelevant for the admittance of the applicant’s sole request. It relates to subject-matter which had never been formulated as a request by the applicant in the first-instance proceedings.

The appellant’s statement that there was no time for filing a further request is not justified, given that the OP started shortly after 9:00 a.m.  and finished before 11:00 a.m.

This is even more so since the applicant had replied to the ED’s preliminary opinion only after 7 months, thereby excluding the possibility for receiving a further written communication from the ED instead of a telephone call four weeks before the OP.

Moreover, what was discussed with the ED concerning the hypothetical subject-matter is not even reflected in the applicant’s sole request filed with the statement setting out the grounds of appeal.

It is not apparent to the board how the discussion according to point 8 of the minutes of whether a claim directed to the primary side only would involve an IS, but constitute a violation of Art 123(2), could be reflected in the amendment introduced in the applicant’s sole request in the appeal proceedings.

The aspects that the applicant’s representative was not sure about how to formulate a new request during the OP before the ED and that the applicant became aware of a possible wording for a request overcoming the amendment objections discussed with respect to the hypothetical subject-matter only after the OP do not constitute circumstances which could justify the admittance of such a request only in the appeal proceedings either.

Contrary to the applicant’s assertions, the filing of their sole request in the appeal proceedings also does not support procedural efficiency, because the primary aim of the appeal procedure is the judicial review of first-instance decisions. As the request had never been discussed in first instance, there is nothing to review.


The position of the board might look hard at a glance, but is perfectly justified.

The first level of convergence and the way it is applied by the boards is nothing new under the sun.

It is rare to see a representative behaving like it happened here.

When a representative goes to OP he should know what to do, especially if the situation before the OP is crystal clear and the possibility of filing AR was given. Be it in examination or in appeal, only one request was ever filed. This is rather short-sighted.

Even late, the applicant’s re representative should have requested some time to file a further request. It might not have been admitted under R 137(3), but the hint from the ED should have been taken.

In T 913/03, it was held that difficulties of obtaining instructions from the applicant or the fear of weakening applicants position are no legitimate excuse for a late filing.

This decision applies mutatis mutandis here.

T 153/22

Share this post


Leave a comment

Leave a Reply

Your email address will not be published. Required fields are marked *