Monday, 28 September 2009

T 1870/07 - (H)IPER-Activity and the Risk of Slapdashiness

In the present case, an International Preliminary Examination Report (IPER) was sent, a communication of the examining division (ED) followed, and then the decision was taken. The single communication from the ED pursuant to A 96(2) EPC 1973 merely signalled agreement with the IPER, indicating lack of novelty with respect to D1, and further cited D2 and D3, merely referring to passages thereof cited in the European Search Report (ESR) without further explanation or amplification. No further objections were raised in that communication. [3.3]

The Board sees no objection to citing an IPER from an International Preliminary Examining Authority (IPEA) other than the EPO (in the present case the USPTO), provided that it constitutes a reasoned statement [i.e. a statement setting out which facts are considered to be established, on which basis, which legal provisions are applied, and the logical process according to which the facts are considered to fulfil the requirement of the applied provision]. The requirement that a communication should be sent as often as necessary does not mean that once a communication fulfils the criteria cited above it is necessary to give the applicant another opportunity to comment on the same reason. However, in the present case the IPER fails to meet the above cited requirements of a reasoned statement. In the case of a novelty objection this will require the analysis of the claims in order to establish their meaning, the analysis of one or more prior art documents and the explanation of the logical process according to which the content of the prior art is considered to disclose the claimed subject-matter in a way that leads to the application of the consequences of the provisions on novelty. The IPER does little more than identify a document and cite four passages from it, which are said to render all the subject-matter of the claims lacking in novelty without explaining the logical chain leading to this conclusion. Even by careful analysis on the part of the reader an argument to be answered cannot be constructed because, from the brief passages of D1 cited, it is apparent that D1 does not, in fact, disclose the claimed subject-matter. [3.4]

Since the IPER does not fulfil the requirements of a reasoned communication, it behoves the EPO to perform its own analysis of the prior art and present the legal and factual reasons as defined above, and give reasons why there are objections to the grant of a patent, instead of relying on the IPER. In the communication of the ED, there is no logical chain of reasoning which would have permitted the appellant to understand and deal with the novelty objection, either by amendment or counterargument.

A 113(1) EPC 1973 is, therefore, not satisfied.

Thus, a substantial procedural violation has occurred. [3.5]

To read the whole decision, click here.

This decision has also been discussed here (in French).