T 0139/87 (Governor valve) 09-01-1989
1. An appeal by an applicant for a European patent is to be considered well founded within the meaning of Article 109(1) EPC if simultaneously amendments to the application are submitted which clearly meet the objections on which the contested decision relies.
2. In this case, the department that issued the contested decision must rectify that decision (contrary to the Guidelines E-XI,7). Irregularities other than those that gave rise to the contested decision do not preclude rectification of the decision.
I. European patent application No. 83 400 619.9, filed on 24 March 1983 and published under No. 0 091 348, was refused by decision of the Examining Division on 9 December 1986.
II. In its decision the Examining Division considered Claim 1 received on 28 May 1986 and ruled that it did not fulfil the requirements of Article 123(2) EPC. In the statement of grounds the Examining Division pointed out that the omission of the features of the third slide, the third cavity and the third throttle in Claim 1 amounted to an inadmissible amendment (Article 123(2)), the original Claim 1 as published having contained these features. For information it also referred to the fact that it had not objected to the novelty and inventive step and had found that a procedure according to Article 109 would thus be possible. On the question of delimitation from the nearest prior art, the Examining Division had been of the opinion that Claim 1 as originally filed would be acceptable provided it were correctly delimited. However, the Examining Division would not insist on Claim 1 being subdivided into two parts.
III. The appellant filed an appeal against this decision on 10 February 1987, paying the fee for appeal and submitting a statement of grounds in good time. In the statement of grounds for appeal the appellant: (i) asked that a European patent be granted on the basis of a new Claim 1 as contained in the statement and corresponding exactly to that originally filed, and (ii) expressed the view that under these circumstances the decision refusing the application should be set aside.
1. The appeal is admissible.
2. The features mentioned in the present version of Claim 1 were already the subject of the original Claim 1 and were supported by the description (Article 84 EPC). The subject-matter of Claim 1 does not therefore extend beyond the content of the application as originally filed (Article 123(2) EPC).
3. The appellant has therefore made amendments which fully meet the only objection on which the refusal of the application is based and notified by the Examining Division in the contested decision.
4. Consequently the appeal is well founded and the Examining Division ought to have rectified its decision pursuant to Article 109(1) EPC. The Board is unable to agree with the position expressed in the Guidelines for Examination in the European Patent Office (Part E, Chapter XI, 7, final paragraph) according to which interlocutory revision may take place only where the application fulfils all (see English or German version) the requirements of the EPC. Article 109(1) EPC clearly states that the department whose decision is contested must rectify its decision if the appeal is admissible and well founded. The Board is of the opinion that an appeal is to be considered well founded if the amendments submitted by the applicant (appellant) clearly meet the objections on which the decision relies. That there are other objections which have not been removed but which were not the subject of the contested decision cannot preclude the application of Article 109 EPC. Nevertheless, despite the fact that the Examining Division had actually referred in the contested decision to the possibility of a procedure according to Article 109 EPC it did not rectify that decision. The Examining Division did not have the opportunity to explain why it did not rectify its decision but the reason would appear to be that the claim was not correctly delimited from the nearest prior art. However, the Examining Division's contested decision did not rely on this ground and the appellant did not comment on this matter in its statement. Moreover, the Examining Division also pointed out that a claim 1 could be formally drafted in one part. Under these circumstances the Board considers that it is neither necessary nor appropriate to comment on this matter and that it should therefore remit the application in accordance with Article 111(1) EPC to the Examining Division for further prosecution.
For these reasons, it is decided that:
1. The contested decision is set aside.
2. The case is remitted to the first instance for further prosecution.