BOARDS OF APPEAL
Decisions of the Technical Boards of Appeal
Decision of Technical Board of Appeal 3.3.1 dated 16 March 2005 - T 1255/04 - 3.3.1*
(Language of the proceedings)
Composition of the board:
A. J. Nuss
P. P. Bracke
S. C. Perryman
Applicant: Applera Corporation
Headword: Dibenzorhodamine dyes/APPLERA
Article: 113(2) EPC
Keyword: "Substantial procedural violation (yes)" - "Reimbursement of appeal fee (yes)" - "Rule 51(4) EPC communication - necessity for including reasons why higher-ranking requests are not allowable"
I. In a case where there is a request considered allowable on which a Rule 51(4) EPC communication is to be sent, but there are also not allowed higher-ranking requests, the communication under Rule 51(4) EPC is deficient if it is not accompanied by reasons why the higher-ranking requests are not allowed. This communication should also expressly mention the option of maintaining the disallowed requests, thus reminding the Applicant and the Examining Division of the possibility for the Applicant of asking for a written appealable decision on these higher-ranking requests (see point 3 of the reasons) (decision T 1181/04 of 31 January 2005 followed).
II. If the Applicant maintains a still pending higher-ranking request discussed at the oral proceedings before the Examining Division, that request cannot be refused under Rule 86(3) EPC. The decision under appeal by merely stating that the application is refused because there is no version approved of by the Applicant in the sense of Article 113(2) EPC on which a patent could be granted is inadequately reasoned because it does not give the substantive reasons why what the Applicant does approve of is not in conformity with the patentability requirements of the EPC (see point 4 of the reasons).
* The decision will be published in a later issue of the OJ EPO.