Legal advice 15/05 rev. 2- OJ 2005, 357

LEGAL ADVICE FROM THE EUROPEAN PATENT OFFICE No. 15/05 (rev.2)¹

- OJ 2005, 357 -

Articles 97; 102; 113 EPC

Auxiliary requests in examination and opposition proceedings

The examining division must refuse European patent applications (Article 97(1) EPC) and the opposition division must revoke European patents (Article 102(1) EPC) if the text of the application or the patent as a whole (description, claims, drawings, if any) does not meet the requirements of the EPC. Filing an alternative version as an auxiliary request may, in certain cases, clarify the procedural position and expedite the procedure without the applicant or patent proprietor being required to abandon his position. This legal advice explains various legal aspects and procedural consequences of filing a set of claims as an auxiliary request during examination or opposition proceedings.

1. Procedure before the examining division

1.1 Under Article 113(2) EPC, the EPO is bound by the applicant's submissions. A European patent may however only be granted on the basis of a text which is without formal or substantive deficiencies and which has been submitted or agreed by the applicant in its entirety. If the text submitted by the applicant contains deficiencies - even if the deficiencies relate to part of the application only - the application as a whole will be refused (Article 97(1) EPC)². It is not possible for the examining division to grant a European patent in respect of some of the claims filed and at the same time issue a decision refusing the application in respect of the other claims, thereby enabling the applicant to appeal. Moreover, since in examination proceedings - unlike in inter partes proceedings - there is no opposing party and no translation costs need be incurred prior to the issue of an appealable decision refusing the application, there is no reason for the examining division to issue an interlocutory decision finding a particular version of the claims³ patentable and allowing separate appeal (Article 106(3) EPC); rather, the (appealable) final decision refusing the application is issued immediately.

1.2 When the examining division, pursuant to Article 96(2) EPC, invites an applicant to correct deficiencies in the application, in particular under Articles 52-57, 83 and 84 and Rules 27 and 29 EPC, the applicant must, if he considers the objections to be justified or acceptable, file a duly amended text of the application. It can be assumed that the applicant will endeavour to keep the content of the claims as broad as possible. If he has difficulty in deciding how much of the original content he can reasonably maintain, he may file one set of claims as a main request and one or more alternative sets as auxiliary requests⁴.

1.3 Auxiliary requests must be formulated in accordance with the principles applying to main requests. It is advisable to file the most broadly worded claims as a main request and the limited version as an auxiliary request⁵.

1.4 The examining division first examines the main request, then the alternative set(s) of claims in the sequence indicated by the applicant. If the examining division considers an alternative set of claims to be patentable, it will propose this version (in an examination report or a communication pursuant to Rule 51(4) EPC or, where appropriate, during oral proceedings), stating why the set of claims according to the main request and any alternative sets of claims preceding the one considered patentable are not acceptable. Requests ranking lower than the version considered patentable will not be examined.

1.5 Where the applicant has filed an allowable version of the claims as an auxiliary request, the examining division can issue the communication pursuant to Rule 51(4) EPC with regard to the set of claims that it considers to be allowable; this communication will state why the preceding requests were not considered allowable, as a rule by citing the relevant examination report or, where applicable, referring to the discussion during oral proceedings. In this situation the applicant has the following options:

(a) He can choose to agree unreservedly to the version communicated pursuant to Rule 51(4) EPC, thereby elevating this version to his sole request. The mechanism for indicating this agreement is the filing of the translations of the claims and the payment of the fees for grant and printing, as indicated in Rule 51(4) EPC. By doing this, the applicant is deemed to have approved the text proposed for grant.

(b) He can refuse to agree to the version communicated and maintain one or more of the preceding requests. The application will then normally be refused pursuant to Article 97(1) EPC , since the text preferred by the applicant is not allowable and the applicant does not agree to the grant of the patent on the basis of the allowable auxiliary request (Article 113(2) EPC). The decision refusing the application will contain a reasoned statement why the main request and any preceding auxiliary requests were not considered allowable. In this case the filing of the translations and payment of the fees is not necessary. A refusal would of course not be issued if the applicant's reply to the communication under Rule 51(4) EPC included arguments which convince the examining division that the highest maintained request meets the requirements of the EPC, under which circumstances it would be necessary to issue a second communication pursuant to Rule 51(4) EPC.

(c) He can file amendments. In this case he also has to file the translations of the amended claims and pay the fees as required by Rule 51(5) EPC, otherwise the application will be deemed withdrawn. If the examining division agrees to these amendments - which is only possible if the proposed amendment contains only one request which is both admissible and allowable - the application will proceed to grant. If the examining division does not give its consent, it will inform the applicant to this effect (Rule 51(6) EPC). If the applicant does not thereupon amend the request, either by consenting to the text communicated pursuant to Rule 51(4) EPC or by submitting a text which has been amended to an admissible extent (Rule 86(3) EPC) and is considered allowable by the examining division, the application will be refused pursuant to Article 97(1) EPC on the same principles as those applying under (b), with the exception that in these circumstances the fees paid under Rule 51(5) EPC will be refunded. Again, if further amended claims are filed in response to the communication under Rule 51(6) EPC, then translations of these must be filed, otherwise the application will be deemed withdrawn, in which case also the fees paid under Rule 51(5) EPC will be refunded.

1.6 The advantage of receiving a reasoned communication pursuant to Rule 51(4) EPC is that the applicant can decide in the light of it how to proceed further. It may however be in some applicants' interest to obtain an immediate decision. If so requested by an applicant, and provided that this does not infringe the right to be heard, the examining division will immediately deliver a decision to refuse the application containing the reasons why the texts of the preceding requests are not patentable.

1.7 If, when filing an appeal, an applicant submits a request that the patent is granted in the version considered to be patentable by the examining division (thus making this text the subject-matter of his sole request), the conditions for granting interlocutory revision pursuant to Article 109 EPC are met. The case is not then remitted to the board of appeal; instead the examining division will usually request the applicant to fulfil all the requirements of Rule 51(4) EPC. The appeal fee is not reimbursed under Rule 67 EPC.

1.8 If the conditions for granting interlocutory revision are not met, the case will be remitted to the board of appeal without delay and without comment as to its merits; the board is not bound by the examining division's positive assessment of the patentability of a text filed as an auxiliary request.

2. Procedure before the opposition division

2.1 Where there are grounds for opposition which prejudice the maintenance of the European patent as granted, the patent is revoked, or, if the opposition division is of the opinion that, taking into consideration the amendments made by the patent proprietor, the European patent and the invention to which it relates meet the requirements of the EPC, it is maintained as amended (Article 102(3) EPC)⁶. The approval of the patent proprietor must be obtained before the patent can be maintained in amended form (Article 102(3)(a) in conjunction with Article 113(2) EPC).

2.2 In opposition proceedings the patent proprietor may likewise file one or more alternative sets of claims on which the opposition division may base a decision to maintain the patent in amended form⁷.

2.3 The principles outlined in 1.3 und 1.4 above regarding the way in which the requests are formulated and the order in which they are examined apply mutatis mutandis. In addition, each set of claims must meet the requirements of Article 123(3) EPC; it should also be noted that any amendments made during opposition proceedings must be occasioned by grounds for opposition specified in Article 100 EPC (Rule 57a EPC).

2.4 If the opposition division considers that the patent can only be maintained in amended form on the basis of an auxiliary request, and all the parties have had an opportunity to present comments (Article 113(1) EPC), it immediately⁸ issues an interlocutory decision pursuant to Article 106(3) EPC to the effect that the European patent and the invention to which it relates meet the requirements of the EPC, account being taken of the amendments made by the patent proprietor; the decision must also contain the reasons why the texts of the preceding requests do not meet the requirements of the Convention. A separate appeal is allowed against this decision⁹.

2.5 The patent proprietor may also appeal against this interlocutory decision, since he is adversely affected by its ruling that preceding versions of the claims are not allowable.