Zusammenfassung von EPC2000 R 137(3) für die Entscheidung T1591/23 vom 08.01.2024

In T 1591/23 the board considered the exercise of the examining division's discretion pursuant to R. 137(3) EPC. The examining division had decided not to admit auxiliary requests XV to XXVI before the text thereof was submitted by the applicant. According to the appealed decision auxiliary requests XV to XXVI were not admitted because none of the auxiliary requests filed and discussed beforehand "seriously addressed" the objections of lack of clarity and added subject-matter raised since the beginning of the proceedings, giving the impression that the applicant tried to shift to the examining division the burden of identifying EPC-compliant subject-matter. Based on this impression the examining division had concluded that refusing to admit these amendments in advance was within the limits of its discretion under R. 116(2) and 137(3) EPC, and had decided not to give consent to these further requests. The board stated that according to the established case law of the boards of appeal the power of the examining division to consent to amendments under R. 137(3) EPC was a discretionary power that had to be exercised after considering all the relevant factors of the specific case and balance in particular the applicant's interest in obtaining an adequate protection for its invention and the EPO's interest in bringing the examination to a close in an effective and speedy way. It was however clearly not possible to do any such assessment as long as the amended set of claims whose admissibility had to be decided upon had not yet been filed (T 756/18). Therefore, the examining division had not based its exercise of discretion on an assessment of the extent to which auxiliary requests XV to XXVI were suitable to overcome the existing objections, but had decided on the basis of its negative findings in relation to the main request and auxiliary requests I to XIV. The board held that the examining division's refusal of consent to amendments made in advance of the amendment being submitted, not being a reasonable exercise of discretion pursuant to R. 137(3) EPC, amounted to a substantial procedural violation. The board concurred with the appellant that their right to be heard had been violated (Art. 113(1) EPC). In relation to the request for reimbursement of the appeal fee (R. 103(1)(a) EPC), the board followed the established case law that a reimbursement is not automatically equitable once a procedural violation has been established and the appeal is allowable, but there should also be a link between the procedural violation identified above and the part of the decision under appeal which has to be set aside. As the appeal had to be filed on the basis of the main request, no such link could be identified, and there was no reason to reimburse the appeal fee on the basis of the aforementioned procedural violation. As a consequence, the request for reimbursement of the appeal fee was refused.