|European Case Law Identifier:||ECLI:EP:BA:1984:T003282.19840314|
|Date of decision:||14 March 1984|
|Case number:||T 0032/82|
|Language of proceedings:||EN|
|Download and more information:||
|Title of application:||-|
|Headnote:||It follows from Art. 113(2) EPC that, when deciding the appeal a Board of Appeal has no authority to order the grant of a European patent containing claims which are different from those submitted by the applicant in their content or interdependency.|
|Relevant legal provisions:||
|Keywords:||Disclosure (implicit) in prior art
Practice of the Boards of Appeal
Summary of Facts and Submissions
I. European Patent Application No.79 300 048.0 filed on 11 January 1979 (Publication No. 0 003 396) claiming a priority of 1 February 1978 (GB), was refused by a decision of the Examining Division of the European Patent Office of 18 September 1981. That decision was based on claims 1-12 filed on 5 May 1981.
II. The reason given for the refusal was that the characterising part of claim 1 was not disclosed in the application as filed.
III. The applicant lodged a notice of appeal, accompanied by a Statement of Grounds, against this decision on 31 October 1981. The appeal fee was paid on the same date.
IV. In a communication of 8.11.82 the Rapporteur of the Board of Appeal notified the applicant that he shared the opinion of the Examining Division and that furthermore the basic feature of the subject matter of the application (viz. the use of a transformer with substantial leakage) appeared to be obvious having regard to US-A-3 185 093.
V. ...the applicant filed an amended claim 1 and requested that a European patent be granted on the basis of this claim and claims 2-12 as filed on 5 May 1981.
Reasons for the Decision
1. The appeal complies with Article 106 to 108 and Rule 64 EPC and is, therefore, admissible. ...
11. Claim 1 and claim 2 are therefore not allowable for lack of inventive step.
12. In accordance with applicants request ... the Board of Appeal will now consider the allowability of Claim 3 ...
13. ...Claim 3 is already unallowable as no inventive step is involved. ...
15. Article 84 EPC requires amongst other things that the claims, which define the matter for which protection is sought (i.e. the object of the invention as implied by Article 52(1) EPC) be clear. The Board of Appeal considers that this has to be interpreted as meaning not only that a claim from a technical point of view must be comprehensible, but also that it must define clearly the object of the invention, that is to say indicate all the essential features thereof. As essential features have to be regarded all features which are necessary to obtain the desired effect or, differently expressed which are necessary to solve the technical problem with which the application is concerned. In the present case, Claim 3 which does not state an essential feature concerning the resistor (80) does in this respect not satisfy Article 84 EPC and is thus not allowable. ...
18. Rule 66(1) EPC in effect instructs a Board of Appeal to conduct its examination in accordance with the provisions of inter alia Article 96(2) EPC and Rule 51(2) EPC. These provisions leave open the possibility in appropriate cases for the Board to indicate to an applicant that the grant of a European patent based on the subject-matter of certain dependent claims would be favourably considered. Nevertheless, it remains the prime responsibility of the applicant to define in the claims submitted to the Board the subject matter for which he wishes to obtain protection (with alternatives if he so desires).
19. In accordance with Article 113(2) EPC, the Board can only decide upon the European patent application in the text submitted to it or agreed by the applicant. It follows that when deciding the appeal the Board has no authority under the EPC to order the grant of a European patent containing claims which are different from those submitted by the applicant in their content or interdependency. Even if the Board has indicated to an applicant that a dependent claim might be allowable if rewritten as an independent claim but the applicant has not expressly requested the Board to consider it as such claim, the Board is not obliged to do so.
20. In the present case, the Board informed the applicant that Claim 11 (with some modifications) was the only claim which would appear to be allowable, but the applicant in his reply stated that he did not wish to proceed with the application on that basis. The applicant did not effectively rebut the Board's objections to the other dependent claims and only made the auxiliary request to consider claim 3 as a possible independent claim. Under these circumstances, the Board is of the opinion that the dependent claims 4 to 12, need not be considered separately once it has been established that the independent claim from which they depend is unallowable.
For these reasons, it is decided that:
the appeal against the decision of the Examining Division of the European Patent Office dated 18 September 1981 is dismissed.