T104 / 15: No referral to the Examining Division

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This case concerns an appeal on examination.
In a notification under Rule 100 (2) EPC, the Chamber had introduced a new D8 document and raised objections under Articles 54, 56 and 123 (2) EPC.

In the main motion, the Applicant requested the first-instance referral to continue the review on the basis of the new D8 document. The Applicant argued that citation of a document for the first time at such a late stage meant that the review of the application was to be limited to a single exchange of letters during which the possibilities for amendment and filing of new applications were limited. A footnote was consistent with the principles of G9 / 91 .

On the contrary, the Chamber decides not to remit the case for several reasons:

  • D8, which emanates from the Applicant, was introduced in response to new arguments submitted with the appeal brief,
  • G9 / 91 applies to inter partes proceedings . According to G10 / 93 , which applies to ex parte proceedings, the Boards of Appeal need not limit themselves to examining the grounds of the impugned decision, nor to the facts and evidence upon which that decision is based;
  • finally, the Chamber, which includes technical members, is able to correctly judge the technical content of the application and the new document cited, and to judge the merits of the case without referral at first instance.