Once the European Patent Office is satisfied that an application is in an appropriate form for allowance, a notification of intention to grant under Rule 71(3) EPC is issued. This notification includes a copy of the text of the application, including the claims, which the Examining Division proposes for grant. The applicant can then: (a) approve of the text, including any changes suggested by the EPO, (b) disapprove the text, or (c) file amendments or corrections to the text proposed for grant.

Under recent changes to the Rule 71(3) EPC procedure, applicants can now waive their right to a further Rule 71(3) EPC communication when amendments filed by the applicant to the text proposed for grant are of a relatively trivial nature. This avoids the grant of the application being unduly delayed by such amendments.

However, a recent decision from the EPO’s Board of Appeal provides a cautionary tale for applicants minded to disapprove a claim set which the EPO has indicated its intention to grant.

According to the Board of Appeal’s decision in T 2001/14, the applicant received a communication under Rule 71(3) EPC which was based on a set of claims submitted as a sole request during examination oral proceedings. However, in response to this communication, the applicant filed an amended set of claims as a main request, and an auxiliary request corresponding to the claims on which the Rule 71(3) communication was issued. Two days later, the applicant withdrew the auxiliary request, and subsequently submitted an alternative auxiliary request. However, since the requests were considered to give rise to the same objections that were overcome in the oral proceedings, the Examining Division decided to exercise its discretion under Rule 137(3) EPC and did not consent to the filing of the claims of the main and auxiliary requests. The application was therefore refused since there was no admissible claim set on file.

The applicant appealed the decision to refuse the application and filed a main and two auxiliary requests with the Grounds of Appeal, the second auxiliary request being identical to the claims on which the Rule 71(3) EPC Communication was issued. Subsequently, in response to the preliminary opinion issued by the Board of Appeal, the applicant filed replacement main and auxiliary requests, in which the third auxiliary request was again identical to the claims on which the Rule 71(3) EPC Communication was issued. Importantly, however, the applicant did not challenge the legal basis given in the appealed decision, nor did it give any reasons as to why the decision under appeal was alleged to be wrong. The Board was therefore tempted to find the appeal as inadmissible. The applicant was saved, however, by the fact that the third auxiliary request was identical to the claims on which the Rule 71(3) EPC Communication was based. This third auxiliary request was interpreted as removing the factual basis for the refusal by the Examining Division, thereby overcoming the reasons for the refusal.

In its deliberations, the Board considered that since the claims of the main and auxiliary requests on file were submitted after the Grounds of Appeal, which should have contained the applicant’s full case, their admission was at the discretion of the Board. The Board decided to exercise its discretion under Article 13(1) RPBA not to admit the replacement main request or first and second auxiliary requests into the appeal proceedings. However, the Board admitted the claims of the third auxiliary request in view of “exceptional circumstances”, including the fact that these claims were identical to the claims on which the Rule 71(3) EPC Communication was based. Further, in view of this fact, the Board remitted the case back to the Examining Division for further prosecution.

Effectively therefore, having decided not to accept the claims which the Examining Division had indicated its willingness to grant, the applicant has ended up back where it started, but only after incurring the time and expense of having gone through the appeal procedure. Moreover, the applicant incurred a substantial risk that their appeal could be found inadmissible, and consequently that the allowable claims would be lost. It is thus important when filing an appeal to appropriately challenge the decision to refuse the application in the Grounds of Appeal; otherwise, the appeal may be found inadmissible. Also, based on the applicant’s experience in T 2001/14, it is prudent to include the allowable claims with the Grounds of Appeal, at least as a fall-back to ensure that the appeal is found admissible.