Non-convergence of requests is not a sufficient reason for non-admittance | T3097/19

• If a request is not admitted because earlier objections are not overcome, Rule 111(2) EPC requires that these earlier objections be made explicit in the decision (see reasons 3).
• Non-convergence of requests is, on its own, not a sufficient reason for non-admittance. It must be reasoned that and why non-convergent requests affect procedural economy in view of the particular circumstances of the case (see reasons 4).
• The purpose of the claims to define the matter for which protection is sought (Article 84 EPC) imparts requirements on the application as a whole, in addition to the express requirements that the claims be clear, concise and supported by the description. The Board deems it to be an elementary requirement of a patent as a legal title that its extent of protection can be determined precisely. Whether this is the case for a specific patent application (or an amended patent) can only be decided with due consideration of the description. Claims and description do not precisely define the matter for which protection is sought if they contradict each other (see reasons 27 to 34).

Background

The Applicant appealed the decision of the Examining Division (ED) to refuse European patent application No. 12871077.9 for lack of compliance with Art. 83 EPC (sufficiency), Art. 84 EPC (clarity) and Art. 56 EPC (inventive step). With the grounds of appeal, the Applicant filed a main request and four auxiliary requests identical to those on which the ED’s decision to refuse is based on.

Among other things, the Board of Appeal commented on requirements on the form of decisions under Rule 111(2) EPC, non-convergence of requests and adaptation of the description.

The ED’s decision to refuse

The ED declined to consider the main request because, according to the ED, “the outstanding objections under Articles 84 and 56 EPC of the previous main request [...] had not been resolved” and the main request was not convergent in view of “the last substantially examined request, i.e. Auxiliary Request I”.

However, according to the Board, the ED’s decision to refuse was not sufficiently reasoned:

• The decision neither reproduced the outstanding objections nor indicated where they are to be found.

• The decision did not explain why the amendments and the appellant's pertinent counter-arguments were, at least prima facie, insufficient to overcome the objections.

• The decision did not explain why the main request and the auxiliary request did not converge and why that alleged lack of convergence was detrimental to procedural economy.

Reasons for the Board’s decision

In the Board’s opinion, substantive deficiencies are an essential part of the reasons for a decision to refuse and must therefore be identified in the written decision (Rule 111(2) EPC). Furthermore, the convergence criterion was not a sufficient reason for non-admittance, but only an indicator that procedural economy might be affected

Since the grounds invoked by the ED’s decision were not considered sufficiently reasoned as required under Rule 112(2) EPC, the Board decided that the ED’s non-admittance decision under Rule 137(3) could not stand and considered the Applicant’s main request, which was filed with the statement of grounds of appeal, to be part of the appeal which therefore had to be taken into account. Moreover, the lack of sufficient reasoning amounted to a substantial procedural violation but was considered not causal for the appeal because the ED’s reasons to refuse the first auxiliary request were considered to obviously also apply to the main request.

Regarding the main, first and second auxiliary requests, the Board decided that the subject-matter of their respective claims 1 lacked inventive step.

Regarding the third and fourth auxiliary requests, the Board found the ED’s objections regarding sufficiency and inventive step were not justified but that these requests were still not allowable because of the absence of an adapted description.

In the Board’s view, the purpose of the claims to define the matter for which protection is sought imparted additional requirements on the application as whole. The Board deemed it to be an elementary requirement of a patent as a legal title that its extent of protection can be determined precisely, but while the clarity and conciseness requirements ultimately served that purpose, they were not sufficient to ensure it. To mark this distinction, the Board preferred to talk about the scope and extent of protection being "precisely determined" rather than being "clear" and considered that consistency between the claims and the description is necessary for legal certainty. The skilled person should not be confronted with contradictory statements when reading the patent application as a whole, because otherwise the skilled person may be left with doubts as to what is the invention sought to be protected.

In the case at hand, the way the invention is described in the description was considered inconsistent with the wording of the claims. As a consequence, the Board was convinced that the scope of protection cannot be determined precisely, due in particular to conflicting statements as to which features constitute the invention and to a sweeping statement in the description that new embodiments of the invention can be obtained by combining technical means.

In the end, the requirements of Art. 84 EPC were considered not met due to the absence of an adapted description.

Decision of the Board

The Board decided to dismiss the appeal.

Summary written by the NLO EPO Case Law Team