T 0092/85 (Belated division and amendment) 28-01-1986

Summary of Facts and Submissions

I. European patent application No. 80 200 295.6 was filed in the name of the appellants on 28 March 1980, claiming priority from a national application filed in the Netherlands on 30 March 1979 (hereinafter referred to as "the corresponding Dutch application").

II.The European patent application was published on 15 October 1980. As published, it included a set of ten claims, each relating to a sealing body for a pipe connection.

III. By a Communication dated 18 February 1981, the Examining Division informed the appellants that the European patent application did not meet the requirements of the European Patent Convention as each of the first seven claims respectively lacked either novelty or inventive step. The features of Claim 8, however, seemed not to be known from or to be suggested by the state of the art as set out in the search report. Therefore, the features of that claim could form, together with essential features of previous claims, the basis of a new Claim 1. Claims 9 and 10 could be accepted if they were dependent from an acceptable Claim 1.

IV. In a letter dated 29 June 1981, sent in response to this Communication, the appellants' representative stated that the suggested restriction to the original Claim 8 could not be accepted for the time being and was considered to be unnecessary, for reasons given, in view of the cited prior art. A set of ten amended claims (Claim 2 of which corresponded substantially to the original Claim 8) was submitted with the letter.

V. In a second Communication dated 10 September 1981, the Examining Division stated that the set of amended claims did not yet appear to be allowable, on various grounds, and offered the applicants' representative the opportunity to discuss the matter either with the primary examiner in an informal interview or with the Examining Division in oral proceedings. It was requested that any new claims for discussion should be submitted beforehand.

VI. With a letter dated 20 January 1982, the applicants' representative submitted a set of eight claims directed to a retaining ring and asked for an informal interview with the primary examiner.

VII. As appears from the file of the case, during the course of an informal interview with the primary examiner, on 13 May 1982, after the applicants' representative had explained the invention and its advantages and after the primary examiner had expressed his opinion that there was no inventive step in the newly presented Claim 1, the appellants' representative proposed to limit the application to the embodiment of Figure 6 which had been the subject-matter of the original Claim 8. He agreed to file new claims so limited and he did so with a letter dated 1 October 1982.

VIII. In a further Communication dated 12 April 1983, the Examining Division stated that the subject-matter of these claims appeared to be patentable with respect to the prior art. A modification to Claim 1, for reasons of clarity, was put forward for agreement and the appellants were invited to file a new Claim 1 accordingly and to adapt the description and the drawings to the new claims.

IX. In response, the appellants' representative filed an amended claim, description and single Figure drawing with his letter dated 21 June 1983.

X. Advance notice of the Communication pursuant to Rule 51(4) and (5) EPC, in which the text proposed for the European patent application was set out, was sent to the applicants' representative on 25 October 1983.

XI. By letter dated 30 December 1983, the appellants' representative informed the European Patent Office that the proposed amendments were acceptable and requested that the Communication pursuant to Rule 51(4) and (5) EPC should be sent. That Communication was duly sent to him on 17 January 1984.

XII. By letter dated 17 April 1984, the appellants' representative informed the Office that the appellants considered that they should be allowed a much broader protection than that provided by the claims mentioned in the Communication pursuant to Rule 51(4) and (5) EPC. Arguments in support of broader protection were advanced in the letter and a set of amended claims and an amended description were submitted with a further letter dated 25 April 1984.

XIII. The Examining Division replied, in a communication dated 16 May 1984, that further examination of the European patent application had revealed that it did not meet the requirements of the European Patent Convention and that, if the deficiencies indicated were not corrected, the application might be refused pursuant to Article 97(1) EPC. The Communication stated that no further amendments could be allowed, since the appellants had requested a full re-examination of the application after receipt of the Communication pursuant to Rule 51(4) and (5) EPC. Furthermore, the filing of a divisional application would not be allowed once that Communication had been sent out.

XIV. By letter dated 26 July 1984, the appellants' represent ative requested reconsideration of the matter. He asserted that agreement to the text on which a patent could be granted had been based on a wrong interpretation of the prior art and that results of recent research by the appellants had shown that the grant of a patent on the basis of the agreed text would be insufficient to provide adequate protection of the invention. Recon sideration of the amended application would not require any additional search: alternatively, the appellants should be allowed to file a divisional application for the subject-matter of the latest amended description and claims. If division was not allowable, examination of the application should be resumed, pursuant to Rule 51(4) EPC.

XV. On 24 October 1984, the Examining Division issued the Decision under appeal, refusing the European patent application according to Article 97(1) EPC on the grounds that there was no agreement on a text for a patent and that the appellant had had enough opportunity to carefully study the prior art, taking into account the number of notifications and letters and the personal consultation. The argument that the results of recent research justified disagreement with the agreed text could not be accepted, since there was a period of five years between the priority date and the research. Furthermore, new prior art brought forward by the appellants (their own patent NL-A-7 412 324) could not justify continuation of the procedure as it could not be regarded as prior art of which the applicant had only just become aware. The request to be allowed to file a divisional application was also refused, since it was not made until after the Communication under Rule 51(4) and (5) had been sent out.

XVI. By letter dated 20 December 1984, the appellants' representative filed a notice of appeal requesting cancellation of the whole Decision. The appeal fee was duly paid.

XVII. In the Statement of Grounds of appeal, dated 4 March 1985, the appellants contended that they were entitled to: (I) allowance of the European patent application on the basis of the text proposed in the Advanced Notice (re-submitted with the Statement of Grounds) coupled with allowance of a divisional application on the basis of claims submitted with the Statement of Grounds; or (II) re-opening of the examination procedure on the basis of the text filed with the letter dated 25 April 1984. A third request was subsequently withdrawn.

XVIII. In a Communication of the Technical Board of Appeal, dated 5 June 1985 the rapporteur invited the appellants to submit further written arguments as the requests made did not appear to be justified. Such arguments were submitted by letter dated 15 October 1985.

XIX. In a Communication dated 22 November 1985 sent with a summons to oral proceedings, it was indicated that the Board was still not satisfied that the appellants' requests were justified. The appeal was unlikely to succeed unless the appellants could satisfy the Board that the Examining Division wrongly exercised its discretion to refuse to allow amendment at such a late stage in the examination proceedings. Allowance of division at such a late stage was also discretionary. The appellants had argued inter alia that the action of the Netherlands Patent Office in allowing division from the corresponding Dutch application should be persuasive in their favour but they had not shown that the procedural circumstances were the same or what reasons had been given (if any) for allowing amendment in the national proceedings. If they wished the situation in those proceedings to be considered further they should file copies of all relevant documents and provide translations into an official language of the EPO, well in advance of the date set for the oral proceedings. (The appellants duly filed such copies and translations). XX. At the oral proceedings held on 28 January 1986, the appellants' representative confirmed the appellants' main and auxiliary requests. He stated that the appellants were primarily interested in being allowed to file a divisional application which would relate to an aspect of the invention the importance of which had not been sufficiently appreciated by the appellants' patent department at the time when the appellants had agreed to the limitation of the scope of their claims. It appeared that it had taken some time to solve the problems of mass production of articles in accordance with the invention. The solution to these problems proved to be matter that had in fact been disclosed and claimed in the European patent application as originally filed. Its practical importance, however, had not been explained to the patent department until 1984. The representative submitted that its inventive significance could be appreciated by comparison with the appellants' earlier Dutch patent NL-A- 7 412 324. He argued that there had been no abandonment by the applicants of this aspect of the invention. Although the claims of the present application had been restricted, nevertheless there was still reference to it in the text of the description. He further relied on the fact that the Application Department of the Netherlands Patent Office had permitted division of the corresponding Dutch application at what he argued was a comparable stage in the procedure.