T 2253/13 17-07-2018

1. Request for re-establishment

1.1 The decision to refuse the present patent application was notified by registered letter dated 27 May 2013 and is thus deemed to be delivered on 6 June 2013 (Rule 126(2) EPC).

The appellant duly filed a notice of appeal with letter dated 22 July 2013.

Pursuant to Article 108 EPC, third sentence, the state­ment setting out the grounds of appeal has to be filed within four months of the notification of the decision. As the expiry date for filing this statement (6 Octo­ber 2013) falls on a Sunday, the four-month period is extended to Monday, 7 October 2013, in accordance with Rule 134(1) EPC.

Since the statement setting out the grounds of appeal was only received at the EPO on 14 October 2013, i. e. one week after the expiry of the extended four-month period, the appellant did not observe the relevant time limit for filing the grounds of appeal.

1.2 The appellant showed that in view of the events - as de­tailed below - related to the writing and sending of the grounds of appeal, the removal of the cause of non-compliance with the time limit for filing the grounds of appeal was the recep­tion of the board's communica­tion dated 12 November 2013. In that communication it was stated that the grounds of appeal were filed out of time and that the appeal was therefore expected to be rejected as in­admissible.

Within the prescribed two-month period after the date of the removal of the cause of non-compliance the appel­­lant filed - under Article 122 EPC - a request for re-establish­ment in its rights concerning the time limit for filing the grounds of appeal, stated the grounds on which the request was based and paid the corresponding fee (Rule 136(1) and (2), first sentence EPC). Further­more, the omitted act was also completed before the expiry of the two-month period as the grounds of appeal had been received by the EPO on 14 October 2013 (Rule 136(2), second sentence EPC). The request for re-establishment is admissible.

1.3 The appellant showed by way of reference to various pieces of evidence relating to e-mails between the appellant, its representa­tive, and the representative's assistant that the statement of grounds of appeal was drafted in time for transmission to the EPO before the expiry of the relevant time limit. The transmission itself was entrusted to the representative's assistant who had been instructed to send the statement by fax followed by a mail confirmation letter. In the board's opinion the representative was entitled to transfer such a routine task to an assistant without infringing all due care in dealing with the filing of the grounds of appeal.

The error leading to the non-observance of the time limit was made on the part of the representative's assistant, who overlooked that the fax transmission was not successful as indicated on the fax report, which was filed as evidence. However, this is considered an excusable isolated mistake by the assistant (see also T 1062/96 of 11 December 1997, Reason 3.2). It could not reasonably be required that an independent cross-check should be performed for checking the fax report when the relevant documents were also sent by confirma­tion mail and did indeed arrive at the EPO.

Hence, the board is satisfied that the appellant was unable to observe the above time limit in spite of all due care required by the circumstances (Article 122(1) EPC).

1.4 In view of the above the appellant can be re-estab­lished in its rights concerning the time limit for filing the statement setting out the grounds of appeal under Article 108 EPC, third sentence (Article 122(1) EPC).

Admission of the main request and the auxiliary request

1.5 The claims of the main and auxiliary requests, which were filed with the notice of the appeal as well as the letter setting out the grounds of appeal, have been amended compared to the corresponding requests on which the contested decision was based. The board has dis­cretionary power not to admit such requests (Article 12(4) RPBA).

1.6 The claims of the main and auxiliary requests presently on file are identical to the claims of the corre­spond­ing requests filed during the examination proceedings with the letter dated 28 March 2013.

In a telephone conversation, which took place on 19 April 2013, the examiner raised an added subject-matter objection (Article 123(2) EPC) against feature (ii) of claim 1 of the main and auxiliary requests (see point 1.1 of the minutes of the telephone conversa­tion). The examiner also stated (ibid.) that the objection could be overcome by replacing feature (ii) in both requests by the following feature:

(II) "the contrast being adjusted into higher contrast if the brightness of the backlight is lower than a reference backlight brightness".

In a letter sent to the EPO by way of fax transmission on the day of the telephone conversation, i. e. on 19 April 2013, the appellant stated with reference to feature (ii) that "a mistake has been made in the former sets of claims" and filed a new main request and auxiliary request with an amended respective claim 1, in which feature (ii) was indeed replaced by feature (II) as compared with claim 1 of the previous requests. The decision under appeal is based on these requests filed on 19 April 2013.

1.7 Hence, the appellant reverted in the appeal proceedings to a previous version of the requests, which had sub­sequently been replaced by other requests.

From the statement setting out the grounds of appeal it does not emerge whether this was done unintentionally or intentionally.

In any case, if the present requests were filed by mis­take, the appellant should have filed the proper re­quests in response to the board's communication pur­suant to Article 15(1) RPBA. In that communication the board expressed its preliminary opinion that the main and auxiliary requests constituted re-sub­mitted re­quests withdrawn during the examination pro­cee­dings and should therefore not be admitted into the appeal pro­ceed­ings. How­ever, in its reply the appellant merely stated its in­ten­tion not to attend the scheduled oral proceedings, but did not submit any further requests.

On the other hand, if the present requests were filed intentionally, the board points out that it is settled case law that the Boards of Appeal do not to admit re­quests that were withdrawn during first instance pro­ceedings (see Case Law of the Boards of Appeal of the EPO, 8th edition 2016, section IV.E.4.3.3 c)). Indeed, withdrawal of the present requests during the examina­tion procedure precluded the issue of a reasoned deci­sion on their merits by the examining division. Re­in­stating these requests into the appeal proceedings might well compel the board either to give a first rul­ing on critical issues such as added subject-matter (see point 2.2 above), which runs counter to the pur­pose of appeal proceedings to review first instance decisions, or to remit the case to the examining divi­sion, which is contrary to procedural economy. In order to forestall these unsatisfactory options, Article 12(4) RPBA provides the board with the discretionary power to hold inadmissible requests which could have been presented in the first-instance proceedings (ibid.).

1.8 In view of the above the board decided not to admit the main request and the auxiliary request into the appeal proceedings (Article 12(4) RPBA).

2. Conclusion

As the board does not admit the main request and the auxiliary request into the proceedings, there is no admissible request on file on the basis of which a patent could be granted. Consequently, the appeal must fail.