In 2012, the Examining Division issued a decision to refuse a patent application. This decision was successfully appealed and the Board remitted the case back to the Examining Division with the specific order to grant a patent based on a specific claim request and a description filed during the Oral Proceedings (see T 1891/12). The Examining Division then issued a communication under R. 71(3) EPC to grant a patent on the basis of this specific content.
In response to the communication under R. 71(3) EPC, the Applicant filed amended "linguistically slightly revised claims" ("sprachlich leicht überarbeitete Ansprüche") merely meant as a clarification of the claims. It thereby invoked its rights under R. 71(6) EPC. Specifically, it concerned the following amendment:
“wherein the measuring head (14) is rotated around the entire circumference of the tyre (12) to check the entire circumference of the tyre (12).
The Applicant motivated the amendment by indicating literal support in a passage of the application as filed, whereas the wording as approved by the Board merely was based on that same passage of the description. The Applicant further considered that this clarification would not change the scope of the claim, and as such, that the decision of the Board should remain valid with regard to the allowability of the claims.
Nevertheless, the Examining Division issued a communication under Art. 97(2) EPC to refuse the application, stating in the reasons that the arguments of the Applicant were not understood and that the request was violating Art. 111(2) EPC, i.e., the binding nature of a decision by the Board of Appeal for a remitted case (res judicata). In the decision, it was argued that the remittal of the case back to the first instance was merely for the implementation of the order to grant and not to re-open proceedings.
The Applicant filed a new appeal against the communication under Art. 97(2) EPC of the Examining Division, arguing that the application of Art. 111(2) EPC was incorrect and that the Examining Division was only be bound to the decision of the Board in so far as the facts are the same, i.e. only the fact that the documents intended for grant satisfy the requirements of the EPC should be considered as res judicata.
In their preliminary opinion, the Board summarized the dispute as whether, in a case in which the Board of Appeal instructs the Examining Division to grant a patent in a precisely defined version, the Examining Division may and, if necessary, must grant a patent in a different version, in this case with different claims, at the request of the Applicant.
The Board refers to Art. 111(1) EPC, concluding that a Board has two decision variants when dealing with an appeal, which are considered mutually exclusive:
The first variant only allows the Board to decide on the grant, but does not mean that the Board can actually carry out the procedure to grant themselves. They need the assistance of the Examining Division to issue a communication under R. 71(3) EPC. Therefore, even if the Board selects the first variant i) and grants a patent, the case needs to be remitted back to the Examining Division for the implementation of administrative measures. According to the Board, the principle of res judicata is also the legal principle behind this first variant and thus if a case is remitted merely with the order to grant it is no longer possible to amend the application in proceedings before the EPO. This is in agreement with the established case law (J 8/98; OJ 687, 1999; T 843/91).
In their reply to the summons, the Applicant/appellant argued that even after remittal of the case with the intention to grant, the Applicant should still have the opportunity to reply to the R. 71(3) EPC communication. This right is conferred by R. 71(6) EPC, which allows an Applicant to file amendments within a period of 4 months after a R. 71(3) EPC communication.
Moreover, the decision by the Board could not be a final decision on the text, as it was the Examining Division that issued the R. 71(3) EPC communication. Having such a communication but not allowing the Applicant to respond would undermine the rights of the Applicant under R. 71(6) EPC. According to the Applicant, the decision of the Board and the possible subsequent decision on the patent application pursuant to Art. 97 EPC are to be seen separately.
In addition, during the Oral Proceedings that were held, the Applicant argued that the case had been remitted under Art. 111(1) EPC first variant (i), and not under Art. 111(1) EPC, second variant (ii). According to the Applicant, Art. 111(2) EPC and the principle of res judicata would only apply to the second variant and not to the first variant of Art. 111(1) EPC.
The final decision by the Board was taken a few months later. The Board studied the intention and interpretation of Art. 111 EPC by discussing case law as well as the wording of the provision in the three EPO-languages. The Board in T1891/12 had not specified which variant they used, but in the current proceedings the Board concluded that a mixture of the first and second variant in Art. 111(1) EPC had been applied. This meant the case had been remitted to the Examining Division, but not for further prosecution. This had been done by different Boards in various previous cases and such a mixed form was never considered to be objectionable.
Regarding R. 71(6) EPC the Board concluded that the fact that the patent may only be granted later, after the administrative measures specified in detail in Rule 71 EPC have been carried out, is irrelevant to the question of the res judicata of the Board's decision which occurred with its adoption. In addition, due to the provisions of the Convention over the provisions of the Implementing Regulations (Art. 164(2) EPC), it follows that the right of filing amendments under R. 71(6) EPC may be precluded by the res judicata in Art. 111(2) EPC. Nevertheless, R. 71(6) EPC remains available for the correction of errors.
With regard to the disadvantages of the Applicant and also of the public in the event of the grant of a patent with a wording that is at least potentially problematic in terms of clarity and validity, the Board merely remarked that these are the possible consequences of a final decision of the Board of Appeal.
The Board thus concluded that the Examining Division was right not to admit the amended claim request into the proceedings. The main request of the Applicant was therefore rejected. In addition, the request for reimbursement of the appeal fee was rejected.
As auxiliary request, the Applicant had requested a grant on the basis of the claim set, description and drawings that were indicated as the basis for grant in T1891/12. The Board allows this auxiliary request and remits the case back to the Examining Division to formally carry out the grant procedure.