T 0674/12 (Rosuvastin zinc salt/EGIS) 25-10-2013

1. The appeal is admissible.

2. Procedural violation

2.1 The European Patent Office can only decide upon a European patent application on the basis of a text submitted to it and agreed by the applicant (Article 113(2) EPC).

2.1.1 At the oral proceedings of 15 June 2010, the examining division proposed to grant a patent on the basis of auxiliary request III filed during these proceedings. In the "opinion on the grant of a patent", explaining why the higher-ranking requests were not patentable, the examining division referred to a "re-filed main request" (see page 1, paragraph 1), whose written version is not on file. The minutes of the oral proceedings mention on page 1, point 1, that the applicant had requested the grant of a patent on the basis of the main request which had been submitted on 12 May 2010. In view of the fact that this discrepancy has never been contested by the appellant, the board can reasonably assume that the main request filed by the appellant during the oral proceedings of 15 June 2010 was identical to the main request filed on 12 May 2010.

2.1.2 The examining division refused the application by decision of 13 December 2011, after setting aside its previous notification of loss of rights dated 17 December 2010 (see point III d) to f)). The examining division based its decision on the main request as well as auxiliary requests I and II, all filed during oral proceedings of 15 June 2010 (see page 4, last paragraph, and copies of the requests attached to the said decision). However, with its letter of 18 November 2010 under Rule 71(4) EPC the appellant had declined to approve the text proposed for grant, had filed a main request, and had requested that a patent be granted on the basis of this main request or of auxiliary request I (see point II c)). The main request on which the decision of refusal is based differs from the main request submitted with the appellant's letter of 18 November 2010 (see point III, above).

2.1.3 Although the examining division pointed out in its decision (see page 4, point 3, fourth paragraph) that it was not clear which requests were maintained after the appellant declined to approve its proposal for grant, no further communication was issued to clarify the appellant's requests. As a consequence, the examining division decided upon requests whose text was no longer agreed by the appellant. This contravenes Article 113(2) EPC and amounts to a substantial procedural violation (see T 1854/08, point 2.1 of the reasons and T 996/12, point 4, both not published) justifying remittal of the case to the department of first instance for further prosecution (Article 111(1) EPC).

3. Refund of the appeal fees

3.1 The appeal fee shall be reimbursed where a board of appeal deems an appeal to be allowable, if such refund is equitable by reason of a procedural violation (Rule 103(1)(a) EPC).

3.1.1 The present appeal is allowable by reason of a substantial procedural violation (see points 1 and 2 above). The issue is therefore whether reimbursement is equitable in the circumstances of this case. Although the letter of 18 November 2010 is clear and unambiguous in that the appellant said it did not approve the grant of a patent on the basis of the third auxiliary request, it does not indicate without any doubt how the appellant intended to proceed. On the one hand, its paragraph 2 seems to be arguing that the main request of 12 May 2010, re-filed during oral proceedings on 15 June 2010, was inventive. The appellant attached a version of this request to its letter and stressed that it did not include new claims. On the other hand, the appellant referred to amendments "carried out in the Oral Hearing" of 15 June 2010 and "requested by the Examining Division in the Oral Hearing". However, neither the minutes nor the communication pursuant to Rule 71(3) EPC conveying the examining division's intention to grant a patent mention that amendments to the main request of 12 May 2010 had been submitted by the appellant or proposed by the examining division during oral proceedings. Amendments had only been requested with respect to the third auxiliary request (see minutes, page 3, point 4.2). It was therefore not clear whether the appellant was maintaining its main request of 12 May 2010, which had been found not to be allowable, or whether it was submitting an amended main request replacing its main request of 12 May 2010. The last paragraph of the appellant's reply to the communication under Rule 71(3) EPC also failed to remove this ambiguity (see point II c) above), since it merely refers to the main request, without any further explanation. Indeed, the appellant neither identified any amendment in the main request filed as an annex to its letter of 18 November 2010, nor indicated the basis for such amendment in the application as filed. Moreover, the appellant did not file a translation of the amended claims as required by Rule 71(4) EPC. Instead, the appellant argued that no decision had been taken by the examining division with respect to the main request, that the deciding body had committed a procedural violation because it had not informed the appellant of the possibility of maintaining its main request which was considered not to be allowable, and that it should be given the opportunity to submit its observations on the examining division's objections before a decision was taken. There is no need for the board to rule on the legal and factual merits of the appellant's submissions. It is sufficient to note that the appellant failed to submit with its letter of 18 November 2010 clear requests which conformed with the procedural options available in reply to a communication pursuant to Rule 71(3) EPC.

3.1.2 Moreover, the appellant failed to clarify in its further submissions whether it was maintaining its main request of 12 May 2010 which had been found not to be allowable, or whether it was submitting an amended main request replacing that of 12 May 2010. In its appeal against the notification of loss of rights pursuant to Rule 112(1) EPC, sent on 17 December 2010, the appellant formulated diverging requests (see page 2, point I of the letter of 15 February 2011). It requested the grant of a patent on the basis of the main request filed during oral proceedings of 15 June 2010, or on the basis of one of auxiliary requests I and II, both submitted during these oral proceedings. The latter request, namely a grant on the basis of auxiliary request II, was not presented in its letter of 18 November 2010.

3.1.3 In view of the foregoing, the examining division should have clarified the requests on file before issuing a decision (e.g. by sending a further communication according to Rule 71(5) EPC or by summoning the appellant to further oral proceedings). However, by filing different unclear requests, which represented the framework of its case, the appellant did not help to expedite the proceedings and contributed to the fact that the decision of the examining division was based on a request which was no longer in the proceedings. Thus, the reimbursement of the appeal fee would not be equitable in the present case.

3.2 The appeal fee is not reimbursed (Rule 103(1)(a) EPC).