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Case Law of the Boards of Appeal

 
 
a)
General issues 

Art. 113(2) EPC states that the EPO shall examine, and decide upon, the European patent application or the European patent only in the text submitted to it, or agreed, by the applicant or the proprietor of the patent.

The applicant may reply to the communication under R. 71(3) EPC by simply disapproving of the text proposed therein and not paying any fees or filing the translations of the claims. In such cases, the application is not deemed to be withdrawn under R. 71(7) EPC. However, the application could be refused under Art. 97(2) EPC for failure to comply with Art. 113(2) EPC, because there is no text agreed to by the applicant (for further details, see Guidelines C-V, 10).

In T 690/09 the board stated that the application would be refused under Art. 97(2) EPC, if there is no text which has been approved by the applicant and allowed by the examining division (see Art. 113(2) EPC 1973, decisions T 647/93, OJ 1995, 132; T 946/96 and T 237/96).

In T 1093/05 the board noted that to grant a patent in a text not approved by the applicant was in breach of Art. 97(2)(a) and 113(2) EPC 1973 and thus a substantial procedural violation. The board stated that in those circumstances it was established board of appeal and Enlarged Board of Appeal case law that an examining division was bound by its final decision on an application, which could be set aside only following an admissible, reasoned appeal (see G 12/91, OJ 1994, 285; G 4/91, OJ 1993, 707; T 371/92, OJ 1995, 324; T 1081/02; T 830/03). In view of this established case law, the board could not subscribe to the view expressed in T 971/06 that an erroneous decision was a nullity and therefore no appeal needed to be filed against it.

In T 237/96 the board noted that in circumstances in which, as in the case in question, amendments proposed by the applicant were not allowed by the examining division by virtue of R. 86(3) EPC 1973 and the applicant did not give its agreement to any other version of the application documents, the established practice of the EPO, sanctioned by consistent case law, was to refuse the application on the ground that there was no version approved by the applicant within the meaning of Art. 113(2) EPC 1973 on which a patent could be granted.

Some decisions showed a different approach concerning the legal basis for refusing an application where no agreed claim text existed. In T 246/08 the board held that the substantive legal requirement for the continued presence of claims in an application was expressed in Art. 78(1)(c) EPC, not in Art. 113(2) EPC. It noted that Art. 78(1)(c) EPC 1973 was a requirement of the application not only for according a filing date, but also for substantive examination and grant (Singer/Stauder, "European Patent Convention", 3rd ed., Art 78 para 6 and Benkard, "European Patent Convention", Art 78, 2nd paragraph) whereas Art. 113(2) EPC 1973 was silent as to the legal consequence of the absence of an agreed text (T 2112/09).

In T 32/82 (OJ 1984, 354) the board held that in accordance with Art. 113(2) EPC 1973, it could only decide on the European patent application in the text submitted to it or agreed by the applicant. It followed that when deciding the appeal the board had no authority under the Convention to order the grant of a European patent containing claims which were different from those submitted by the applicant in their content or interdependency. Even if the board had indicated to an applicant that a dependent claim might be allowable if rewritten as an independent claim but the applicant had not expressly requested the board to consider it as such, the board was not obliged to do so.

In T 647/93 (OJ 1995, 132) the board stated that the provision of Art. 113(2) EPC 1973, that the EPO shall consider and decide upon the European patent application or the European patent only in the text submitted to it, or agreed, by the applicant for or proprietor of the patent, is a fundamental procedural principle, being part of the right to be heard, and is of such prime importance that any infringement of it, even as the result of a mistaken interpretation of a request, must, in principle, be considered to be a substantial procedural violation. In any case, such violation occurs when, as in the case at issue, the examining division does not make use of the possibility of granting interlocutory revision under Art. 109 EPC 1973, after the mistake has been pointed out in the grounds of appeal (see T 121/95).