CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 2599/19 – One request may hide another!

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The application relates to a vibrating flow device and a method for manufacturing a vibrating flow device.

Brief outline of the case

The applicant appealed the refusal of the application.

The ED considered that that the main and sole request then on file (MR 0) did not meet the requirements of Art 123(2) and 54(1).

With its statements of grounds of appeal, the applicant filed a new MR=MR 1 which was never filed before the ED.

The applicant was summoned to OP before the board. A communication under Art 15(1) RPBA20 was annexed to the summons.

In reply to the summons to OP, the applicant filed a new MR=MR 2.

The board held that MR 1 would not have been admissible under Art 12(4) RPBA07.

The board further decided not to admit under Art 13(2) RPBA 20, MR 2.

The appeal was dismissed and the refusal confirmed.

Applicant’s reasons for filing a new request

Claim 1 of MR 2 has been modified with respect to claim 1 of MR 1 filed with the statement of grounds of appeal. Claim 1 of MR 2 was thus extensively reworded over claim 1 of MR 1.

MR 1 had been filed by the applicant for the first time with the statement setting out the grounds of appeal.

According to the applicant, these amendments to claim 1 of MR 1 were intended to overcome the objections under Art 123(2), 84 and 56 raised in the board’s communication against MR 1.

Concerning the admittance of MR 1, the applicant argued that during first-instance proceedings it considered it unnecessary to have to limit the claims further. More generally, the applicant did not consider it reasonable to narrow the scope of protection more than necessary if the examiner at first instance maintains, in the applicant’s view, an incorrect interpretation of what is disclosed in, and/or considered an obvious modification of, a prior art document.

The applicant submitted that the examining division had issued summons to OP after just a single communication pursuant to Art 94(3), regularly changed its mind concerning the objections to be raised, and introduced further documents at a late stage, namely when summoning the applicant to OP. This course of action of the examining division had prevented the applicant from properly defending its case and filing adequate amendments on time during the first-instance proceedings.

The board’s position

MR 1 had never been filed before the ED. The admissibility of MR 1 was thus prima facie questionable under Art 12(4) RPBA07.

The board considered that it is only once MR 1 had been admitted that the objections raised in the communication annexed to the summons would become effective.

The objections raised in the communication annexed to the summons would prevent a patent from being granted on the basis MR 1 only if the latter would at all be admitted.

Until the time a decision is taken on the admissibility of MR 1, the objections raised in the board’s summons were only of a hypothetical nature, in the sense that they are conditional on the admittance of MR 1.

Independent claims 1 to 3 of MR 1 have been extensively reworded over MR 0 pursued before the ED.

Since the beginning of the examination proceedings, N and IS objections had been raised by the examining division in view of document D1. The applicant initially responded with arguments without attempting to overcome the objection by substantively amending claim 1. In the subsequent communication annexed to the summons to OP before the ED, the N and IS objections in view of D1 were reiterated and further objections of N and is based on further documents added.

In spite of the discussion during the OP dealing with the patentability issues, the applicant refrained from submitting amendments, which could have been in the form of AR, to overcome these objections.

As a result of the applicant’s approach, there could be no in-depth and concluding exchange of views on N and IS of the now-claimed subject-matter between the applicant and the ED, thereby shifting the discussion on patentability to the appeal proceedings without any good reason.

Moving the debate on N and IS to the appeal proceedings runs counter to procedural efficiency as well as to the primary object of the appeal proceedings, to review the decision under appeal in a judicial manner under Art 12(2) RPBA20.

If the applicant was convinced during first-instance proceedings that it was correct in its views, there is no comprehensible reason why, upon filing the appeal, the applicant amended the set of claims underlying the appealed decision instead of maintaining it unchanged, i.e. replaced MR 0 by MR 1. Since the ED’s objections were known to the applicant at the latest during the OP held before the ED, the applicant had had the opportunity to make any desired amendment to its case during first-instance proceedings.

Since the initial MR=MR1, filed for the first time with the statement of grounds of appeal, would not have been admitted under Art 12(4) RPBA07, the objections raised against this initial main request by the board in the communication annexed to the summons to OP are of a hypothetical nature and do not establish exceptional circumstances referred to in Art 13(2) RPBA20.

The board noted that according to the Guidelines for Examination, applicants may be summoned to oral proceedings by examining divisions after just a single communication pursuant to Art 94(3). The board was unable to identify unjustified changes of mind of the ED during the examination proceedings. Changes of the objections raised by the examining division were essentially due to amendments of the claims. Documents D6 and D7 were annexed to the summons to OP. Therefore the applicant had had sufficient time to consider the relevance of these documents and to file adequate amendments of the claims during first-instance proceedings.


Quasi mandatory necessity of filing of requests in first instance

Even under the RPBA07 it was never advisable not to file at least one AR if the requests on file were deemed not allowable in general and especially if, in the opinion of the ED, they lacked N and IS.

Whether the applicant or its representative is convinced of the merits of his position, at the end of the day it is of little use to him. The applicant might “not consider it reasonable to narrow the scope of protection more than necessary”, but eventually it is the ED that decides.

If the ED errs in its legal and factual assessment, a board of appeal will review its decision. But at least there must be a request which is properly filed in order to be admissible, even if eventually it is not allowable.

Under the RPBA20, the result would be the same. An amended request filed after objections raised for the first time in the summons will not be admitted if a previous request would not have been admitted, for instance under Art 12(6) RPBA20.

Summons and new prior art in examination

Summons after one communication are not so frequent, but not impossible. It is left to the discretion of the ED to decide when to summon.

Further prior art might be introduced in the procedure with a summons to OP, cf. E-III, 6. It might be annoying, but there is no legal challenge possible as to the admissibility of this prior art.

According to the Guidelines E-III, 6 summons are issued at least for months ahead of the day of the OP in examination. This corresponds to a standard time limit for a communication under Art 94(3) on substantial aspects.

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