T 0749/02 (Late filed amendments/SEIKO) 20-01-2004

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is therefore admissible.

2. Procedural matters and remittal

As mentioned above (see item II(f) above), the decision under appeal was signed by a formalities officer on behalf of the Examining Division. Since the present case falls under Rule 51(5), second sentence EPC (version of Rule 51 in force until 30 June 2002), it was beyond the competence of a formalities officer to issue such a decision (cf. "Notice of the Vice- President Directorate General 2 of the European Patent Office dated 28 April 1999 concerning the entrustment to non-examining staff of certain duties normally the responsibility of the examining or opposition divisions" (OJ EPO 1999, 504; reproduced in "Ancillary Regulations of the EPC, 2002", R. 9(3))). The decision has therefore to be regarded a nullity (cf. T 295/01, OJ EPO 2002, 251, point 7 of the reasons), even though, as is apparent from the fact that the file contains an unreasoned order refusing the application signed by all the members of the Examining Division on Form 2048.2, the formalities officer had possibly acted on the instructions from the Examining Division.

According to Article 10 of the Rules of Procedure of the Boards of Appeal, a board shall remit a case to the department of the first instance if fundamental deficiencies are apparent in the first instance proceedings unless special reasons present themselves for doing otherwise. In the present case, the appellant requested that the Board should decide on the substantive issues in the appeal without remitting the case (cf. item IV above). As the Board is able to decide in favour of the appellant, a remittal of the case would in the Board's view have unduly delayed the procedure to the detriment of the appellant (cf. e.g. T 360/91 of 2 December 1991, points 4 and 9 of the reasons).

3. Discretion to admit amendments under Rule 86(3) EPC

In the present case, the Examining Division exercised its discretion under Rule 86(3) EPC to refuse the amendments filed by the applicant with the letter dated 15. October 1999, with the result that the application in suit was refused on the ground that there was no text agreed by the applicant. The appellant has in the statement of the grounds of appeal argued that the Examining Division exercised its discretion in an unreasonable way.

3.1. Following decision G 7/93 (OJ EPO 1994, 775), when an appeal is lodged against the way in which the discretion was exercised, a Board of Appeal should only overrule the way in which a first instance department had exercised its discretion if it comes to the conclusion either that the Examining Division had not exercised its discretion in accordance with the right principles or that it had exercised its discretion in an unreasonable way, and had thus exceeded the proper limits of its discretion (cf. point 2.6 of the reasons).

3.2. In the present case, the request for further amendments with the letter dated 15 October 1999 was filed in response to a communication under Rule 51(4) EPC, i.e. at a stage where in normal cases the substantive examination has been completed. Although the Board in principle endorses the position held by the Examining Division in its communication of 3 December 1999 that at such late stage of the examination procedure, only such amendments which do not appreciably delay the preparations for grant of the patent should normally be allowed (cf. item VII(a) above; Guidelines C-VI, 4.9), late- filed amendments must nevertheless be judged on a case-to-case basis and reasons must be given when no further amendments are admitted.

3.3. The unpublished decision T 237/96 of 22 April 1998 concerns the same issue as in the present case, i.e. the question how the discretion under Rule 86(3) EPC should be exercised when a request for further amendments was filed in response to a communication under Rule 51(4) EPC. Following the principles set out in G 7/93 it was held that "to refuse minor amendments of merely editorial nature, or amendments relating to aspects of the invention of no relevance to the assessment of the patentability of the claimed subject matter, if such amendments were clearly acceptable under Articles 84 and 123(2) EPC, may for instance not be considered reasonable of an examining division" (cf. point 2.3 of the reasons).

In the earlier unpublished decision T 182/88 of 3. November 1988, it was held that reasons for not allowing a further amendment must be given beyond merely stating that it is "late".

3.4. In the present case, the reasons given in the communication dated 3 December 1999 for not allowing the new claims were (i) the amendment was submitted late (after that the communication under Rule 51(4) EPC was issued) (cf. item VII(a) above); and (ii) claim 1 did not meet the requirements of Article 84 EPC in the light of discussions held during the oral proceedings (cf. item VII(b) above).

According to the minutes of the oral proceedings, the only clarity objection raised by the Examining Division was against claim 7 of the main request for the reasons that although the claimed method was for a method of manufacturing "a semiconductor device as claimed in claim 1", the method according to claim 7 did not result in the device of claim 1 (cf. item II(a) above).

Since the claims filed with the letter dated 15 October 1999 only contains method claims, the above-mentioned objection cannot apply for these claims.

Thus, the Examining Division when considering whether the claims as amended (in relation to claims which were considered to be allowable) were allowable, referred in its communication to an objection of lack of clarity which was raised earlier on in the examination procedure in relation to a different process claim. As shown above, the objection which was raised in relation to the earlier process claim is not applicable to the claims as amended, and therefore, the above communication did not contain any reasoning in respect of the claims submitted by the applicant beyond the observation that the amendments were filed at a late stage.

Thus, the exercise of the discretion against admitting the proposed amendments was not reasoned.

4. The Board has decided to exercise its power under Article 111(1) EPC to examine whether the amendments proposed with the letter dated 15 October 1999 should be admitted under Rule 86(3) EPC.

4.1. Following the criteria set out in T 237/96 mentioned above for exercising the discretion under Rule 86(3) EPC for late- filed amendments (cf. item 3.3 above), the Board comes to the conclusion that the amendments should be admitted, since firstly, the amendments do not render the claim unclear, that is, the proposed amendments neither introduce any unclear terms nor do they contradict other features of claim 1. The amendments to claim 1 have a clear basis in the description, as indicated by the applicant when filing the proposed amendments (cf. application as published, column 11, lines 23 to 30; column 19, lines 43 to 52), and it was not contended by the Examining Division that the amendments do not have a basis in the application as filed, as required by Article 123(2) EPC.

Finally, the nature of the amendments, i.e. replacement of "deposition of silicon dioxide film" by "formation of an insulating film" does not affect the assessment by the Examining Division in favour of inventive step of the claimed subject matter.

4.2. For the above reasons, the amendments proposed with the applicant's letter dated 15 October 1999 are allowed.