T 0153/85 - Admissibility of late-filed requests / Criterion of "clear allowability" - #12

Citation rank: 12
No. of citations: 212

T 153/85 is concerned with the criteria to be applied by Boards of Appeal when they assess admissibility of late-filed requests in appeal proceedings. T 153/85 developed the criterion of "clear allowability" for the admissibility of such late-filed requests.

The appellant in this case had filed an appeal against the decision of the Examination Division refusing his patent application for lack of inventive step.

Claim 1 of the Main Request (claims as granted) related to an amorphous thermoplastic polymer defined by its structure. A first auxiliary request was filed in good time together with the Grounds of Appeal, in which the structure for the thermoplastic polymer was more narrowly defined. A second auxiliary claimed the use of the defined thermoplastic polymer "for the production of moulded articles". Three weeks before oral proceedings the appellant filed a third auxiliary request which included further limitations compared to the second auxiliary request.

During the oral proceedings the appellant filed a new Main Request, which included further amendments and was reduced to three claims, in response to the findings of the Board during the oral proceedings.

The Board had to decide whether the very late filed new Main Request was admissible. They stated:

"The admissibility of the main request raises a point of principle. In relation to appeal proceedings, the normal rule is as follows: If an appellant wishes that the allowability of the alternative set of claims, which differ in subject-matter rom those considered at first instance, should be considered (both in relation to Article 123 EPC and otherwise) by the Board of Appeal when deciding on the appeal, such alternative sets of claims should be filed with the grounds of appeal, or as soon as possible thereafter." (reasons 2.1)

The Board considered Articles 108, 110 and 111 EPC setting out the Appeal procedure, and the pertinent case law relating to it. In particular, from Art. 108 EPC ("a written statement setting out the grounds of appeal") they concluded that the appellant is required to set out in his grounds of appeal the reasons why the appeal should be allowed (reasons 2.1). They also took into account that the appeal procedure is designed to ensure that as far as possible the oral proceedings are brief and concentrated, and that the appeal is ready for decision at the conclusion of the oral proceedings (ibid.).

From these considerations they concluded that

"... a Board may justifiably refuse to consider alternative claims which have been filed at a very late stage, for example during the oral proceedings, if such alternative claims are not clearly allowable."

In line with this statement the Board refused to admit the Main Request, because it was filed late during oral proceedings without any proper justification, and also because the Board was of the opinion that the claims did not satisfy Article 52(1) EPC.

Nowadays the criterion of "clear allowability" for the admission of late-filed requests is routinely applied in the proceedings before the Examining Divisions, Opposition Divisions and Appeal Boards of the EPO (see, e.g., Guidelines 2018, H-II, 2.7.1 for examination, and E-VI, 2.1, 2.2 for opposition procedure).

---

Headnote:

1. If an appellant desires that the allowability of alternative sets of claims should be considered in an appeal, such alternative claims should normally be filed with the statement of grounds of appeal or as soon as possible thereafter.
2. When deciding an appeal during oral proceedings, a Board of Appeal may refuse to consider alternative claims which have been filed at a late stage, e.g. during the oral proceedings, if such claims are not clearly allowable.
3. When assessing novelty, the disclosure of a prior document must be considered in isolation. It is only the actual content of a document (as understood by a skilled man) which destroys novelty.
4. A prior document may on its proper construction (i.e. when its meaning to the skilled man is determined) incorporate part or all of a second prior document into its disclosure, by specific reference to the second document.

The full text of the decision can be found here.

Quotes from decisions citing T 153/85 can be found here.