Decision to refuse a patent application must include a decision on admissibility of requests filed

Background

European patent application No. 12 843 467.5 was refused by the Examining Division [ED] under Art. 97(2) EPC. The reasons were that the subject-matter of claim 1 of the “new main request” and that the subject-matter of claim 1 of the "new main request (2)”, both filed by e-mail during oral proceedings conducted by videoconference before the ED, lacked inventive step pursuant to Art. 56 EPC over a combination of documents D1 and D2.

Together with the “new main request” and “the new main request (2)”, another seven auxiliary requests were submitted by e-mail during oral proceedings before the ED. The e-mail set out the following: “New Auxiliary Requests 1-7 (might be filed during further proceedings, if necessary).”

According to the minutes of the oral proceedings, after a discussion on their admissibility the ED decided not to admit the requests into the proceedings. These auxiliary requests have not been mentioned and are not part of the ED’s decision under appeal refusing the application though.

The Appeal

The applicant (Appellant) appealed the ED’s decision to refuse the application, requesting that a patent be granted on the basis of a main request, an auxiliary request I, or on one of auxiliary requests II.1-II.7. The main request, auxiliary request I and auxiliary requests II.1-II.7 were all filed with the statement of grounds of appeal. Furthermore, the Appellant requested reimbursement of the appeal fee.

Other Case Law

The Board relied on the Case Law of the Boards of Appeal, 10th edition, V-A-11.6.11 c) (i), in particular Headnote decision T1105/96 in its reasons. The Board found that the lack of reasoning and decision concerning the auxiliary requests in the ED’s decision to refuse the patent application constituted a substantial procedural violation, and that reimbursement of the appeal fee was therefore justified.

Claim requests

The main request filed with the statement of appeal corresponds to the “new main request” filed during oral proceedings before the ED.

Auxiliary request I corresponds to the “new main request (2)” filed during oral proceedings before the ED. Auxiliary requests II.1-II.7 correspond to the auxiliary requests 1-7 filed and received by e-mail together with the “new main request (2)” during oral proceedings before the ED.

The Board agreed with the ED that the subject-matter of independent claims 1 and 3 according to the main request and independent claims 1 and 3 according to auxiliary request I lack inventive step over D1 and D2.

As concerns auxiliary requests II.1-II.7, the Board concluded that these were to be considered duly filed and that a decision on their admissibility and the reasoning behind that decision should therefore have been included in the decision under appeal.

The Board stated in its reasons for the decision, that the ED has no power to refuse the filing of a request. It is the applicant’s right to file new requests at any stage of the examining proceedings. As soon as a set of claims is submitted to the ED the claims are duly filed and pending, whether filed on paper or, as in the present case, by e-mail for filing during oral proceedings by videoconference. A decision on the admissibility of the request should therefore be included in the ED’s decision.

Herein, the statement in the accompanying e-mail that the requests “might be filed during the proceedings, if necessary”, did not alter the fact that the requests were correctly transmitted and received by the ED. Since there was no statement that sending these requests by e-mail was unintended and that they therefore should be disregarded, or that the requests were actively withdrawn, the requests were considered correctly submitted and hence were pending when the ED took the decision to refuse the application.

The Board further stated that the ED has a discretion to admit late filed requests into the proceedings according to Rule 137(3) EPC, and that whether to actually admit the auxiliary requests into the proceedings is a matter that should have been decided by the ED.

In the present case, it appeared from the minutes of the oral proceedings that admissibility of the requests was discussed during the oral proceedings, that the applicant was informed about the preliminary opinion of the ED that the auxiliary requests would not be admitted if filed, and that the ED decided not to admit them.

However, the decision and reasoning for the decision to not admit the auxiliary requests into the proceedings was not included in the decision under appeal. 

The Board therefore concluded that the decision of the ED is deficient.

The Board reasoned that the ED either

1. Considered auxiliary requests 1-7 not pending and did not decide on their admissibility, or
2. Decided to not admit these requests into the proceedings but did not provide a written reasoning with regard to their decision.

According to the Board, both options constitute a substantial procedural violation justifying reimbursement of the appeal fee, as well as the remittal to the ED to decide on the admissibility of the auxiliary requests 1-7 and any other outstanding issues.

Decision of the Board (of Appeal)

The Board decided that the decision under appeal is set aside, and remitted the case back to the ED for further prosecution. The Board also decided that the appeal fee is reimbursed.