One highlight of the 'Boards of Appeal and recent decisions' event at EPO
Patrick van Ginneken
Patent Attorney at AOMB IP | Ik help jou met al jouw vragen over octrooien: zelf verkrijgen of last van die van een ander?
Last Friday I attended the ‘Boards of Appeal and recent decisions’ event of the European Patent Office. I have previously written about the new Art. 13(2) of the Rules of Procedure at the Board of Appeal (here and here) and was pleased to see this topic come up briefly during the event.
In case T2214/15, an appeal against a decision of the Examining Division, a main request and a first auxiliary request were filed by the applicant before the summons to Oral Proceedings were issued by the Board of Appeal. Whereas the Examining Division did not grant a patent because it held that the claims lacked clarity, the Board additionally found, in its preliminary opinion, that claim 1 of both the main request and the first auxiliary request did not comply with Art. 123(2) EPC. This ground had not been invoked by the Examining Division, and was thus raised for the first time during the entire proceedings in said preliminary opinion.
As can also be seen in other cases a second auxiliary request, filed well before the Oral Proceedings but after the summons were issued, was admitted into the proceedings as this was a ‘good faith reaction’ to the new objection raised for the first time in the preliminary opinion. In other words, such circumstances constitute “exceptional circumstances” under Art. 13(2) RPBA.
The second auxiliary request was, however, refused for not complying with the requirements of Art. 84 EPC, nor the requirements of Art. 123(2) EPC.
Interestingly a third auxiliary request, filed during the oral proceedings after the refusal of the second auxiliary request, was not admitted into the case. According to the Board of Appeal, objections regarding Artt. 123(2) and 84 EPC were already raised in the preliminary opinion, and the applicant could have expected the second auxiliary request to be refused on these grounds. As the Board put it, the topics of discussion in view of auxiliary request 2 did not differ in substance from those identified in the summons; the appellant cannot be given a repeated opportunity to file amended claims until no new problems are introduced.
Another interesting decision (in my opinion) that was discussed is T1362/15. I will discuss that one in more detail in the near future. Stay tuned!