T 2101/14 – Not admissible if not promptly substantiated
The applicant filed an appeal
against a decision of the Examining Division refusing applicant’s European patent application. With the statements of the grounds of appeal, the applicant
forwarded a new set of claims not previously presented during examination. In a
preliminary assessment of the claims, the Board expressed its concerns about
the introduction of a new unsearched feature.
In order
to obviate the Board’s concerns, the applicant presented a further set of new
claims. Since this further set of new claims was based on a suggestion for an
allowable claim of the Examining Division, the applicant did not consider necessary to file substantiating
arguments in support of this new request. Only during oral
proceedings the applicant substantiated the patentability of the further set of new
claims.
For the Board, an unsubstantiated request becomes effective at the date
on which the request is substantiated (T 1732/10) and thus too late in the present case
because it would have inevitably required an adjournment of the oral
proceedings, which is excluded by Article 13(3) RPBA. Thereby the Board refused
to admit the further set of new claims into the proceedings even if the claims
were filed well before arrangement of the oral proceedings and dismissed the appeal.
Summary of
Facts and Submissions
I. The appeal is
against the decision of the Examining Division refusing European patent
application No. 02 090 385 on the grounds that the main and auxiliary requests
did not comply with Article 123(2) EPC, and that the subject-matter of claim 1
of the main request did not involve an inventive step within the meaning of
Article 56 EPC in the light of the combination of documents D1 (EP 1 096 303
A2) and D2 (US 6 140 009).
II. At the oral
proceedings held before the Board the appellant requested that the decision
under appeal be set aside and that a patent be granted based on claims 1-9
filed with the letter of 6 September 2017.
III. The history of
the case before the Board may be summarised as follows:
(a) With the statement
of grounds of appeal the appellant forwarded "a new set of claims on which
the appeal shall be based". New claim 1 differed from claim 1 of the
previous main request at least in the following:
"with a transfer
film (30; 50) having a thickness of 50 nm to 100 nm and being in contact with an
array substrate."
An indication was
given of the basis for this request in the application as originally filed. The
correctness of the Examining Division's decision was not challenged, but it was
argued that the new feature cited above rendered the claimed subject-matter
inventive over D1, D2 and any of sixteen documents cited in the application.
(b) The appellant was
summoned to oral proceedings scheduled to take place on 6 October 2017. In a
communication pursuant to Article 15(1) RPBA the Board gave its provisional
assessment of the case, which was essentially as follows:
The feature considered
to confer an inventive step had not been included in any of claims 1-37 as
originally filed, nor in any claim subsequently filed during the examination
procedure. It was therefore doubtful whether it had ever been searched, either
when the European search report was drawn up, or subsequently during
examination. It would therefore be impossible to reliably judge the
significance of the new feature on the basis of the prior art on file, leaving
the Board with the options of either remitting the case to the department of
first instance under Article 111(1) EPC for further prosecution, including an
additional search, or refusing to admit the amendment using its discretion
under Article 12(4) RPBA.
The appellant was
invited to provide reasons why the new request had not been submitted in
proceedings before the department of first instance. In the absence of any
convincing reasons, the Board was likely to refuse to admit it into the appeal
proceedings pursuant to Article 12(4) RPBA.
The arguments in the
statement of grounds of appeal focused entirely on the amended feature added on
appeal. The appellant had not called into question the conclusions of the
Examining Division in relation to inventive step. The Board also saw no reason
to question these conclusions.
The appellant was
reminded of the provisions of Articles 13(1), 13(3) and 15 RPBA. Further
written submissions, if any, were to reach the Board at least one month before
the date of the oral proceedings.
(c) With a letter
dated 6 September 2017 the appellant filed a further set of claims "which
shall replace the previous set of claims". Claim 1 reads as follows:
"A method of
manufacturing a display device, comprising:
forming an underlying
layer (370) over a substrate (300);
forming an insulating
layer (380) over the substrate (300) to expose the underlying layer (370); and
forming an organic EL
layer (390) on the exposed portion of the underlying layer (370),
wherein the insulating
layer (380) has a taper angle on an edge portion thereof,
wherein a thickness of
a portion of the insulating layer (380) formed on an edge of the underlying
layer (370) is equal to or less than 250 nm, and
characterized in that
the taper angle of the
insulating layer (380) is 15 degrees, and
the organic EL layer
(390) is formed using a laser transfer technique."
The letter included
brief points on Article 123(2) EPC and clarity. Again, no assertion was made that the decision of the Examining
Division was in any way wrong. The
section entitled "Novelty and Inventive Step" comprised only the
following text:
"Applicant
assumes that the claims are now acknowledged to be novel and based on an
inventive step. Claims and specification should further comply with all other
requirements of the EPC."
(d) The original oral
proceedings were cancelled due to the public transport system being badly
affected by storms. A new date was set for 1 December 2017.
IV. At the oral
proceedings, concerning the admissibility of the sole request, the appellant
argued essentially as follows.
The new claims were
submitted in response to the negative provisional opinion of the Board that the
claims filed with the statement of grounds comprised unsearched subject-matter
and might not be admissible. The new claims were based on originally-filed
claims and therefore had been searched.
It was not considered necessary to file substantiating arguments in support
of claim 1, as it corresponded to a suggestion for an allowable claim made by
the Examining Division (communication dated
15 October 2010, Reasons, point 5.1).
The claims on file had
been submitted in good time one month before the original date for oral
proceedings, and approximately three months prior to the revised date for oral
proceedings, giving the Board ample time to consider them. A telephone call
from the Board might have been expected if it was considered that there was any
formal deficiency in this respect. New claims were sometimes admitted even in
oral proceedings.
The appellant's
analysis concerning inventive step would essentially show that the claimed
subject-matter provided the optimum conditions for avoiding the defects which
can arise in an edge portion when employing a laser transfer technique on an
etched, non-flat substrate. The full analysis in relation to the prior art
could be presented in the oral proceedings and would take no more than an hour,
which was not excessive and which would not require adjournment.
A failure to allow
this request to be fully defended in oral proceedings would amount to a denial
of the right to be heard.
Reasons
for the Decision
1. Admissibility of
the appeal
1.1 Although the
correctness of the appealed decision was not challenged in the statement of
grounds of appeal, amended claims were filed, and reasons given why the
subject-matter of the new claims was considered to involve an inventive step
and to satisfy the requirements of Article 123(2) EPC (the grounds on which the
application had been refused). The appeal is therefore considered to be
sufficiently substantiated to satisfy the requirements of Article 108 EPC,
third sentence (see Case Law of the Boards of Appeal, 8th Edition 2016,
IV.E.2.6.5(b)).
1.2 The fact that,
after the four month time limit set out in Article 108 EPC, the appellant
withdrew the request to which the reasoning given in the statement of grounds
applied has no bearing on the assessment of the admissibility of the appeal
(see Case Law of the Boards of Appeal, 8th Edition 2016, IV.E.2.6.3)
1.3 The appeal is
admissible.
2. Admissibility of
the sole request
2.1 One of the grounds
for refusal was a failure to meet the requirements of Articles 52(1) EPC and 56
EPC 1973, a conclusion which the Board provisionally endorsed in the
communication pursuant to Article 15(1) RPBA. At no point in the written
procedure did the appellant provide a single argument why the subject-matter of
claim 1 of the present request is considered to involve an inventive step. The decision of the Examining Division was never
challenged, nor was any written argument provided explaining why the amendments
to claim 1 rendered the subject-matter inventive.
2.2 Furthermore, it
has never been argued by the appellant that it is self-evident that claim 1
involves an inventive step. On the contrary, as explained below, the appellant
wished to make submissions on this point which it was estimated would take no
more than about an hour.
2.3 Hence, as far as
the written procedure is concerned, the Board can see nothing which would justify any
deviation from the position of the Boards that unsubstantiated requests (unless
it was obvious how they overcame the outstanding objections) should not be
admitted into the proceedings (see Case
Law of the Boards of Appeal, 8th Edition 2016, IV.E.4.2.4).
2.4 At the oral proceedings the
appellant asked to be allowed to present, for
the first time, the case on inventive step in relation to its present
request.
The question is
therefore whether the conditions for admissibility of the request may be met by
supplying the missing substantiation during the oral proceedings for the first
time. The arguments of the appellant in this regard, and corresponding opinions
of the Board, are examined in the following sections.
3. The argument that
the request was based on a suggestion of the Examining Division
3.1 The appellant argued that the new
claims did not need to be accompanied by reasoning in support of
non-obviousness, since claim 1 corresponded to a suggestion for an allowable
claim made by the Examining Division under
point 5.1 of the Reasons in the communication dated 15 October 2010 (a similar
suggestion was made under point 5.1 of the Reasons in the communication dated
23 October 2013).
3.2 Firstly, the Board
notes that this argument was itself presented for the first time in the oral
proceedings, with no reason given why this point could not have been made
earlier. Secondly, the Board finds a lack of consistency in the appellant's
position in this regard. It is a fact that the appellant's representative had
prepared arguments that the subject-matter of claim 1 involved an inventive
step, and wished to present these arguments at oral proceedings. The Board does
not see how this is consistent with a belief that no arguments are necessary in
the case of a claim suggested by the Examining Division.
3.3 The main point,
however, is that any suggestion made by the
Examining Division in a communication is merely an attempt to expedite the proceedings. It is not binding on the Boards of Appeal or
even on the Examining Division itself.
Any doubt on this point was dispelled by the Enlarged Board of Appeal in G 10/93 (OJ EPO 1995; 172; Reasons,
point 7).
The fact that the subject-matter of a request filed in appeal proceedings
corresponds to subject-matter which had been suggested by the Examining
Division does not relieve the appellant
of the responsibility to substantiate the request, nor does it justify the
filing of such substantiation for the first time in oral proceedings.
4. The argument that
the request had been submitted in good time
4.1 The current claims
were filed one month before the original date for oral proceedings, and approximately
three months prior to the revised date for oral proceedings. The Board accepts
that this allowed ample time to read the new claims, and to consider the basis
in the application as filed for these claims suggested by the appellant.
However, the Board did
not have the opportunity during this period to consider the case in relation to
inventive step, since no case had been made out for the Board to consider.
4.2 According to
Article 13(3) RPBA:
"Amendments
sought to be made after oral proceedings have been arranged shall not be
admitted if they raise issues which the Board ... cannot reasonably be expected
to deal with without adjournment of the oral proceedings."
4.3 Where an appellant
files new claims after oral proceedings have been arranged - even if within a
period set by the Board - and chooses not to file any arguments on inventive
step prior to the oral proceedings, the relevant question under Article 13(3)
RPBA in determining whether these claims may be admitted, is whether the Board
can reasonably be expected to deal with the appellant's case on inventive step
being presented for the first time in oral proceedings.
In fact, unless the
reasons why the new claims overcome the outstanding objections are self-evident
(which is not the case here - see point 2.2, above), the effective date of filing of
the claims is the date on which the substantiation is first provided (or offered in oral proceedings). This was
stated in T 1732/10 as follows:
"For the Board, unsubstantiated
requests normally become effective only at the date on which they are
substantiated. Their filing in and of itself plays
therefore no role, whether one, two (as in the present case) or three months
before the oral proceedings" (T 1732/10, Reasons, point 1.5, fourth
paragraph; see also "Catchword").
A similar point was
made in T 1134/11 (see Reasons, point 10.6).
4.4 The Board concurs
with these decisions, and hence the fact that the claims themselves were filed, without
substantiation, three months prior to the oral proceedings does not guarantee
that they will be admitted.
5. The argument that
the Board could deal with the new submissions in the oral proceedings
5.1 The appellant's
representative asked to be allowed to present the case on inventive step in the
oral proceedings, which, it was estimated, would take no more than about an
hour. The Board could then deliberate and take a decision, with no adjournment
being required.
5.2 The Board accepts that new
submissions are not necessarily inadmissible for the sole reason that a party
seeks to introduce them for the first time during oral proceedings. In particular, in the case of arguments, one of the
purposes of oral proceedings is to allow the parties to develop, elaborate and
add to their previous reasoning. Oral proceedings are not, however, intended to provide a
means for an appellant to build the entire case on inventive step from scratch,
especially where no good reason is given
why these arguments were not previously submitted in writing.
5.3 In ex parte
proceedings, before ordering the grant of a patent it is the responsibility of
the Board to ensure that the conditions for patentability exist. This involves
not only being informed of and understanding the arguments of the appellant,
but also subjecting these arguments to a critical analysis.
It is for this reason
that the Board requested that any new submissions should be made in writing
well before the date of the oral proceedings. In this way a Board of Appeal not
only has the opportunity to familiarise itself with the arguments and arrive at
an initial assessment well before the date of the oral proceedings, it also has
the opportunity for further reflection in the period up until the date of oral
proceedings. This further period of review and study may well throw up doubts
about the Board's initial assessment, or reveal issues which were not initially
apparent and which need to be clarified at oral proceedings.
The appellant's
request to be allowed to present the arguments on inventive step in toto in the
oral proceedings, effectively invites the Board to short-circuit this
procedure, and to deliver a final decision based on an initial assessment of an
argument which it has just heard for the first time in the oral proceedings,
thereby eliminating the possibility of further reflection and study (without
any time constraint) which the filing of arguments in the written procedure
provides. The Board does not see why it should reasonably be expected to accede
to this request in a case where no valid reason has been given why these
arguments were not filed earlier.
Where arguments are brought for the first time in oral proceedings, allowing a period of reflection comparable to that
referred to above would inevitably require adjournment of the oral proceedings, which is
excluded by Article 13(3) RPBA. For this reason, the Board
informed the appellant that it would not hear the arguments on inventive step
which the appellant sought to make at oral proceedings, and that the set of
claims for which these arguments would have represented the sole substantiation
on inventive step was not admitted into the proceedings.
5.4 The sole request of the appellant
is that the decision under appeal be set aside and that a patent be granted
based on the set of claims filed with the letter of 6 September 2017. As this
set of claims is not admitted into the proceedings, this request cannot be
allowed, and the appeal must be
dismissed.
6. The jurisprudence
of the Boards
6.1 The above approach
is in line with the jurisprudence of the Boards of Appeal.
6.2 In T 253/06,
following a decision rejecting an opposition, the Board sent a communication in
preparation for oral proceedings which drew attention inter alia to the
requirements of Article 13 RPBA and set a time limit for filing new
submissions. The patent proprietor filed new auxiliary requests shortly before
the expiry of this time limit, but gave no indication why the amendments were
made or how they were to overcome the Board's objection of lack of inventive
step. Apart from those requests which had already been part of the proceedings
and had merely been re-filed, the Board decided in oral proceedings that these
new requests were unsubstantiated and were not admitted into the proceedings
(Reasons, point 3).
The Board concluded
that requests filed after the appointment of oral proceedings can be regarded
as inadmissible in accordance with Article 13(3) RPBA, even if filed within a
prescribed time limit, if they are not substantiated, i.e. if they were not
accompanied by reasons explaining why the amendments had been made and how they
were intended to overcome the objections raised in the course of the
proceedings (Catchword and Reasons, point 3).
7. The allegation of a
denial of the right to be heard
7.1 According to
Article 113(1) EPC ("Right to be heard and basis of decisions"):
"The decisions of
the European Patent Office may only be based on grounds or evidence on which
the parties concerned have had an opportunity to present their comments."
7.2 The decision of
the Board in this case is based on the non-admittance of the sole request
(comprising claims 1-9 filed with the letter of 6 September 2017) into the
proceedings pursuant to Article 13(3) EPC.
The admissibility of
these claims and the question whether the substantiating arguments could be
presented during the oral proceedings were fully discussed, and the views of
the appellant, as summarised under point IV, above, were taken into account in
reaching the present decision.
The requirements of
Article 113(1) EPC were therefore met, and the arguments of the appellant set
out below do not persuade the Board otherwise.
7.3 The appellant
essentially argued that the right to be heard was not being respected as it was
not allowed to present the arguments on inventive step during the oral
proceedings.
7.4 The appellant's
argument that there was a denial of the right to defend the claims on their
substantive merits must clearly fail. Article 113(1) EPC guarantees a right to be heard on the
grounds and evidence on which a decision is based. The present decision is not based on the ground of lack
of inventive step, and so Article 113(1) EPC confers no right to be heard on
this matter per se.
7.5 In the opinion of
the Board, the only conceivable
way in which Article 113(1) EPC could be invoked in the present case, would be
to allege that the arguments on inventive step have a bearing on the question
of the admissibility of the claims, and should be heard for this reason. Although the appellant did not raise this argument
directly, the Board is nevertheless prepared to consider it.
Cases may conceivably
arise in which a Board decides to hear new substantive arguments in oral
proceedings in relation to the question of the admissibility of the request to
which they relate. For example, if an appellant wished to demonstrate that the arguments
substantiating the request do not deviate significantly from arguments
previously filed in the written procedure, and if the Board considered this to
be relevant, it could use its discretion to allow the new substantive arguments
to be heard. In the present case,
however, no arguments having any relevance to the question of inventive step of
the present claims were filed in the written procedure, and so this reason for
hearing the substantive arguments does not apply. Nor can the Board see any other reason (and no reason
has been provided by the appellant) why, in the present case, hearing the
appellant's arguments on inventive step in the oral proceedings would have had
any bearing on the admissibility of the request.
Order
For these reasons it
is decided that:
The appeal is
dismissed.
This decision T 2101/14 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:T210114.20171201. The file wrapper can be found here. Photo "Refused" by Helen Alfvegren obtained via Flickr under CC BY 2.0 license (no changes made).
This decision T 2101/14 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:T210114.20171201. The file wrapper can be found here. Photo "Refused" by Helen Alfvegren obtained via Flickr under CC BY 2.0 license (no changes made).
I take bets that in the future, should the RPBA be amended, unsubstantiated submissions might not be admitted at all.
ReplyDeleteThis decision is not a one off. There are other decisions going in the same direction: lack of substantiation in writing leads to the requests being not admissible, cf. T 549/13, T 1476/14 or T 1176/13.
I think this decision is well founded and completely understandable.
ReplyDeleteA. 12(2), 1st sent. RPBA stipulates that the grounds of appeal shall contain an appellants complete case. A. 12(2), 2nd sent. RPBA defines that the grounds shall set out clearly and concisely the reasons why it is requested that the decision under appeal is to be reversed including all facts and arguments relied on.
In my view, the requirements defined in A. 12(2), 2nd sent. RPBA should principally also apply to any amendment to a party´s case submitted afterwards according to A. 13(1), 1st sent. RPBA because in this case, the amendment becomes the (new) reason why the decision under appeal is to be reversed.
In view of the presently lacking substantiation and absence of clear (prima facie) allowability of the request, the new submitted request can well be seen as complex and as taking too much time for responsibly analyzing it in a reasonable time frame (A. 13(1), 2nd sent. RPBA) and without adjournment of the oral proceedings (A. 13(3) RPBA). In this respect, I share the BoA´s view that the finding of allowability of the request by the Examining Division is irrelevant. The BoA are not bound by findings of the Examining Division and have the competence to examine the facts of their own motion (A. 114(1) EPC).
I espcially like the statement of the BoA under item 5.3 that it is their responsibility to ensure that the conditions for patentability exist and that this involves not only understanding the arguments of the appellant, but also subjecting these arguments to a critical analysis. I share this view that there must be time to provide counter-arguments for the BoA. An appellant trying to get an advantage by "blindsiding" the BoA by shortening this time must live with the consequences...
Hmm, maybe the case could have been turned around by arguing in the oral proceedings that the claims originally filed with the appeal contain only subject matter that !should! have been searched by the examining division (Art. 92 EPC) and by requesting that the matter is therefore remitted to the ED for further search. The Board admitted that they do not need a lot of time to assess with respect to A123, so one could argue that they should be able to assess whether A92 has been fulfilled also in a very short time.
ReplyDeleteI think your idea is very good. Since the BoA is unlikely to perform the required search itself, remittal appears to be highly likely. Still, the examining division would have to allow the change back to the allowable claim set after having performed the sdaech to the (different) claim set. Not improbable and would have been worth a try. :-)
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