T 1707/07 10-05-2011

1. The present decision was taken after the entry into force of the revised European Patent Convention (EPC). At that time, the present application was already pending. The board has therefore applied the transitional provisions in accordance with Article 7(1), second sentence, of the Revision Act of 29 November 2000 and the decisions of the Administrative Council of 28 June 2001 (Special edition No. 1, OJ EPO 2007, 197) and 7 December 2006 (Special edition No. 1, OJ EPO 2007, 89). Articles and rules of the revised EPC and of the EPC valid until that time are cited in accordance with the citation practice (see the 14th edition of the European Patent Convention, page 6).

2. The duly summoned appellant did not attend the oral proceedings. According to Rule 71(2) EPC 1973, the proceedings could however continue without him. In accordance with Article 15(3) RPBA, the board relied for its decision only on the appellant's written submissions. The board was in a position to decide at the conclusion of the oral proceedings, since the case was ready for decision (Article 15(5) and (6) RPBA), and the voluntary absence of the appellant was not a reason for delaying a decision (Article 15(3) RPBA).

3. As far as the admissibility of the present appeal is concerned, the provisions of EPC 1973 are to be applied, since all the time limits for complying with the conditions for filing an appeal had expired before the revised EPC entered into force on 13 December 2007 (see also J 10/07, OJ EPO 2008, 567, Reasons, point 1).

4. Article 108, third sentence, EPC 1973 provides that a statement setting out the grounds of appeal shall be filed within four months of notification of the decision. It is an established general principle that the statement should specify the legal or factual reasons on which the case for setting aside the decision is based. The arguments must be clearly and concisely presented to enable the board to understand immediately why the decision is alleged to be incorrect, and on what facts the appellant bases his arguments, without first having to make investigations of its own (see Case Law of the Boards of Appeal of the European Patent Office, Sixth Edition, July 2010, section VII.E.7.6.1).

The examination of whether the requirements of Article 108, third sentence, EPC 1973 are met has to be made on the basis of the statement of grounds of appeal and of the reasons given in the contested decision (see for example J 22/86, OJ EPO 1987, 280, Reasons, point 2; T 162/97, reasons, point 1.1.2), taking into account any amendments made to the claims.

5. In the present case the examining division exercised its discretion as provided for in Rule 86(3) EPC 1973 and did not consent to the amendments to the claims as filed with the letter dated 12 December 2006. Since these claims were declared by the applicant to replace the hitherto valid claims (see point V above), the application was refused, for the reason that there was no text of the application which had been agreed by the applicant, as required by Article 113(2) EPC 1973, and which had obtained the examining division's consent under Rule 86(3) EPC 1973.

6. In decision G 7/93 (OJ EPO 1994, 775, Reasons, point 2.6) the Enlarged Board of Appeal stated that if an examining division has exercised its discretion under Rule 86(3) EPC 1973 against an applicant in a particular case and the applicant files an appeal against the way in which such discretion was exercised, it is not the function of a board of appeal to review all the facts and circumstances of the case as if it were in the place of the first-instance department, in order to decide whether or not it would have exercised such discretion in the same way as the first-instance department. The Enlarged Board of Appeal added that if a first-instance department is required under the EPC to exercise its discretion in certain circumstances, such a department should have a certain degree of freedom when exercising that discretion, without interference from the boards of appeal and that a board of appeal should only overrule the way in which a first-instance department has exercised its discretion if it comes to the conclusion either that the first-instance department in its decision has not exercised its discretion in accordance with the right principles, or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion.

7. The appellant explained in the statement of grounds of appeal that the claims according to the main request filed with that statement were allowable within the meaning of Rule 86(3) EPC 1973 since they overcame the deficiencies pointed out e.g. in the summons to oral proceedings before the examining division. The appellant also explained that the claims according to the main and auxiliary requests filed with that statement were clarified and why the subject-matter of the claims of these requests involved an inventive step over the prior art.

8. The statement of grounds of appeal thus only deals with the deficiencies pointed out by the examining division in the first-instance proceedings (including the oral proceedings) but which, according to the appealed decision, were not the reasons for refusing the application. The statement does not address the issues of the reasoning of the decision under appeal since no reason is given as to why, in the given circumstances of the present case, the examining division did not exercise its discretion under Rule 86(3) EPC 1973 in accordance with the right principles or exercised its discretion in an unreasonable way, and thus exceeded the proper limits of its discretion.

9. The appellant also does not argue that the examining division was wrong in concluding that, as a consequence of the exercise of its discretion under Rule 86(3) EPC 1973, there remained no text of the claims submitted or agreed by the applicant (Article 113(2) EPC 1973).

10. As a result, the appellant does not provide in the statement of grounds of appeal any reasons as to why the refusal decision was alleged to be incorrect.

11. Furthermore, the claims according to the two requests filed with the statement of grounds of appeal do not correspond to the claims according to the amended auxiliary request found in principle acceptable by the examining division. On the contrary, it is immediately apparent that claim 1 of these requests does not include the features of claim 1 of the amended auxiliary request (in particular the "optical black processor"; see annex to the minutes of the oral proceedings, page 2/4, lines 12 to 17) which are identified in the decision under appeal as essential for overcoming objections against the former main request, the omission of which is given as a reason for refusing to consent to the amendments under Rule 86(3) EPC 1973.

12. As a result, the mere fact of filing amended claims with the statement of grounds of appeal does not overcome the reasons for the refusal in the present case.

13. In conclusion, the appellant's case for setting aside the decision under appeal does not address the reasons given in the decision under appeal. From the submissions made in the statement of grounds of appeal it is thus not clear to the board why the decision under appeal is alleged to be incorrect. Nor is there anything in the reasoning of the appealed decision that strikes the board as so flawed as to justify a review.

14. In the reply to the board's communication under Article 15(1) RPBA dated 7 April 2011 and, therefore, after expiry of the time limit for filing the statement of grounds according to Article 108, third sentence, EPC 1973, the appellant does not argue as to why the statement of grounds of appeal sets out in a sufficiently clear manner why the decision under appeal is incorrect. Nor does the appellant provide any arguments as to why the amended claims filed with the statement overcome the reasons for the refusal in the present case. Instead, the appellant submits for the first time legal and factual reasons as to why the decision under appeal based on Rule 86(3) EPC 1973 should be set aside.

15. In view of Article 113(1) EPC 1973, an appellant's arguments as to why the statement of grounds of appeal was not deficient have to be considered by the board even if they are provided after expiry of the time limit for filing the statement of grounds of appeal according to Article 108, third sentence, EPC 1973. However, if a statement of grounds of appeal does not comply with the requirements of Article 108, third sentence, EPC 1973, any deficiency has to be remedied within the period of four months specified in the afore-mentioned provision. Therefore, the board does not consider new legal and factual reasons as to why the decision under appeal should be set aside if they are filed after expiry of the period specified in Article 108, third sentence, EPC 1973. As a result, the appellant's submissions filed with the reply dated 7 April 2011 are not relevant for deciding on the admissibility of the present appeal. The same applies to the clean version of the claims acknowledged as allowable by the examining division which was filed with the afore-mentioned reply.

16. It follows from the above that the present statement of grounds of appeal does not fulfil the requirements of Article 108, third sentence, EPC 1973. Thus the board must reject the appeal as inadmissible pursuant to Rule 65(1) EPC 1973.