G 0010/93 (Scope of examination in ex parte appeal) 30-11-1994
Inclusion of new grounds in ex parte proceedings
Reformatio in peius
Summary of proceedings
I. In a decision dated 6 December 1993 (T 933/92, OJ EPO 1994, 740) Board of Appeal 3.4.1 of its own motion referred the following points of law to the Enlarged Board of Appeal under Article 112(1)(a) EPC:
1. In an appeal from a decision of an examining division in which a violation of one or more specified requirements of the EPC has been relied upon as the ground for refusal of a European patent application, when examining the appeal under Article 110 EPC does the board of appeal have either the obligation or the power to examine whether the application meets other requirements of the EPC which the examining division regarded as having been met in the examination proceedings and which have not therefore been relied upon in its decision as grounds for refusal of the patent application?
2. If a board of appeal does not have such an obligation but has such power, under what circumstances should it use such power?
II. These points were raised in an appeal from a decision of the examining division refusing the European patent application on the ground that the new version of the claims submitted during the examination proceedings violated Article 123(2) EPC.
III. Reference was made in the decision referring the points of law to the Enlarged Board to the following circumstances of the proceedings before the examining division:
This patent application was originally filed under the PCT, and an international preliminary examination was carried out under PCT Chapter II. Upon entering the national (regional) phase before the EPO, the applicant filed an amended text of the application and requested that a patent be granted on the basis of these amendments.
During examination of the application pursuant to Article 96 EPC, the examining division issued a communication in which objections were raised to the amendments to the original application under Article 123(2) EPC. The communication also stated:
"To overcome the above objection it appears necessary to revert to Claim 1 on which the final report of the preliminary examination was based.
Nor are there any objections to this claim under Article 52(1) EPC (novelty and inventive step)."
IV. As the applicant maintained its request, the examining division refused the application. The decision did not deal with the patentability of the original set of claims.
V. The applicant appealed against the examining division's decision to refuse the application on the ground that there were no objectively valid grounds for refusal under Article 123(2) EPC.
VI. Upon examining the appeal pursuant to Article 110 EPC, the board of appeal formed a preliminary opinion which agreed with the decision of the examining division concerning violation of Article 123(2) EPC, but, concerning the existence of an inventive step within the meaning of Article 56 EPC, disagreed with the view set out by the examining division in its aforementioned communication. The board of appeal did not, however, issue any communication to the appellant.
VII. In the referring decision, Board of Appeal 3.4.1 considered that the extent both of the duties and powers of a board of appeal, when examining an appeal from a decision of an examining division under Article 110 EPC, to consider whether the application satisfied requirements of the EPC which the examining division regarded as having been met in the examination proceedings and which were not therefore relied upon in its decision as grounds for refusal of the patent application, was not entirely clear.
VIII. The appellant in T 933/92 was given the opportunity to comment.
It felt that the main principles to be applied were those enshrined in Articles 113 and 114 EPC. Acting in accordance with these principles, an applicant can request the board to set aside a decision to refuse an application taken by the examining division and to grant the patent in a specific version, or to remit it, with specific directions, to the examining division. When ruling on a patent application, the board must adhere strictly to the version of the application on which the applicant's request was based (Art. 113 EPC). Thus, if the examining division has "already granted" an applicant a patent "in accordance with the auxiliary request" and the applicant's appeal is directed solely to the refusal of the main request, the board cannot, in the absence of a corresponding request, decide to revoke the "patent granted in accordance with the auxiliary request", particularly not for a reason previously ignored or not taken sufficiently into account by the examining division.
However, when examining the facts the board is not restricted to the facts, evidence and arguments provided by the applicant. When ruling on an appeal against refusal of an application, the board can incorporate into its decision whether to grant the patent facts which cast doubt on patentability and which it has ascertained itself, that is it can decide to take into account a further reason to refuse the application. Having the competence to rule on the facts of a case, it therefore not only can but must examine, from both the factual and legal point of view, the version of the claims on which the applicant based its appeal as to further requirements for grant. However, it then has to give the applicant sufficient opportunity to present its comments on the further ground (Art. 113(1) EPC). In crucial cases, and particularly at the request of the applicant, it is appropriate to remit the case to the examining division in order not to deprive the applicant of an instance as a result of the further ground or the new prior art.
1. The referring decision asks whether, in its examination of a decision of the examining division refusing an application, the board of appeal can rely on grounds relating to requirements which the examining division regarded as having been met.
2. In the decision under consideration, the extent of the duties and powers of the board of appeal in ex parte proceedings relating to this question was deemed to be not entirely clear. The Enlarged Board of Appeal has deduced from the main purpose of inter partes appeal proceedings, which is to give the losing party the opportunity to contest the opposition division's decision, that the consideration of new grounds for opposition in appeal proceedings is restricted (G 9/91 and 10/91, OJ EPO 1993, 408, 419, reasons, 18). By way of explanation, these decisions refer to the contentious nature of opposition appeal proceedings and their status as a post-grant procedure. Consequently, the judicial procedure for examining an administrative decision of the first instance is by its very nature less investigative than an administrative procedure. The opposition division or board of appeal is not obliged to consider all the grounds for opposition referred to in the EPC, going beyond the grounds covered by the statement under Rule 55(c) EPC. Fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee (G 10/91, OJ EPO 1993, 421, reasons, 3).
3. These principles cannot be applied to ex parte proceedings. The grounds for opposition defined in Article 100(a) to (c) EPC are not comparable in function with the comprehensively described grounds for refusal in Article 97(1) EPC. In contrast to opposition appeal proceedings, the judicial examination in ex parte proceedings concerns the stage prior to grant and lacks a contentious nature. It relates to the examination of the requirements for the grant of a patent in proceedings in which only one party - the applicant - is involved. The instances responsible must ensure that the conditions for patentability exist. In ex parte proceedings, therefore, the boards of appeal are restricted neither to examination of the grounds for the contested decision nor to the facts and evidence on which the decision is based, and can include new grounds in the proceedings. This applies to both the patentability requirements which the examining division did not take into consideration in the examination proceedings and those which it indicated in a communication or in a decision to refuse the application as having been met.
4. The power to include new grounds in ex parte proceedings does not however mean that boards of appeal carry out a full examination of the application as to patentability requirements. This is the task of the examining division. Proceedings before the boards of appeal in ex parte cases are primarily concerned with examining the contested decision. If however there is reason to believe that a condition for patentability may not have been satisfied, the board either incorporates it into the appeal proceedings or ensures by way of referral to the examining division that it is included when examination is resumed.
5. The board must decide after due assessment of the particular circumstances whether it will rule on the case itself or whether it will remit the matter for further prosecution to the examining division (Art. 111(1), second sentence, EPC). The relevant circumstances of the case must be taken into account and consideration must be given in particular as to whether further investigations should be carried out, whether a procedural violation has taken place which would preclude a decision on the merits, whether there has been any significant change in the facts with respect to the contested decision, what stance the applicant is taking with regard to the "loss of instance", whether a decision by the board would speed up the proceedings significantly and whether there are any other grounds for or against remittal. The weight accorded to individual factors depends on the circumstances of the particular case.
6. The decision referring the points of law makes reference to T 60/91, OJ EPO 1993, 551, which led to the Enlarged Board of Appeal's decision G 9/92 (OJ EPO 1994, 875) and deals with the admissibility of modifying a contested decision to the detriment of the appellant in opposition appeal proceedings. It should be pointed out that in refusing an application the examining division is ordering a total loss of rights. A modification of this decision to the detriment of the applicant is - from the point of view of the result - not possible in ex parte proceedings. If the contested decision is confirmed for other reasons, the application remains refused. Therefore no parallels can be drawn with the above-mentioned decision as it relates to a partial loss of rights, namely maintenance of the patent in amended form by the opposition division.
7. The appellant's arguments in T 933/92 are based on a completely different starting-point, namely the fact that the examining division had pronounced on two different versions of the application and declared one of them to be patentable (see III above). Confirmation of the decision to refuse the application would inadmissibly disadvantage the appellant if the examining division had already approved one particular version. It was true that new grounds could be introduced into the proceedings under application of the principle of the board acting of its own motion, but the rights from previous proceedings before the examining division had to be safeguarded. The appellant was of the opinion that an appeal should always lead to remittal to the examining division in cases where the examining division had indicated in a communication that a particular version of the application was patentable. The appeal was directed solely against the refusal of the main request. In the absence of a request, the board could not then decide to "revoke the patent granted in accordance with the auxiliary request".
According to the appellant, a communication from the examining division stating that a particular version of an application is patentable is equivalent to a (partial) grant of a patent. The board cannot agree with this. The examining division is not bound by the view - whether positive or negative - expressed in the examination pursuant to Article 96(2) EPC. Examination proceedings may be reopened "for whatever reason" after the approval in accordance with Rule 51(4) EPC (see G 10/92, OJ EPO 1994, 633, reasons, 7). The examining division based its decision to refuse the application on the request for grant of a patent which incorporated the latest set of claims filed (see III above). If the board holds that the application is not patentable, it can confirm the decision. There is no obligation to remit the decision to the first instance.
For these reasons it is decided that:
The point of law referred to the Enlarged Board of Appeal is answered as follows:
In an appeal from a decision of an examining division in which a European patent application was refused, the board of appeal has the power to examine whether the application or the invention to which it relates meets the requirements of the EPC. The same is true for requirements which the examining division did not take into consideration in the examination proceedings or which it regarded as having been met. If there is reason to believe that such a requirement has not been met, the board shall include this ground in the proceedings.