Thursday, 8 October 2009

T 1439/05 - Boards Kill by Numbers

In its communication under R 51(4) EPC 1973, the Examining Division (ED) stated that it had the intention to grant a patent on the basis of the amended auxiliary request VI. The ED also stated its reasons for not being able to grant the main request and the auxiliary requests I, II, III, and V. Moreover, the ED stated for the first time that the auxiliary request IV, which it had declared allowable after clarification, was not pursued by the representative of the applicant but was submitted in revised form as auxiliary request VI. Following the communication under R 51(4), the representative denied approval of the text intended for grant and requested to grant a patent on the basis of the amended main request. [6.2]

According to A 113(2) EPC 1973, the EPO has to stick to the text submitted to it, or agreed, by the applicant (“principle of request” ; Antragsprinzip). If there are several requests in the form of a main request and auxiliary requests ordered according to their rank, then the ED is bound by the order of the requests in its decision (T 169/96; T 540/02).

In the present case the additional statement of the ED in its communication under R 51(4) and the corresponding statement in its decision violate the principle that the request is binding (Prinzip der Antragsbindung). In order to avoid misunderstandings, the ED would have had to clarify the situation of the requests (Antragslage) before announcing its decision at the end of the oral proceedings (OPs). However, the minutes of the OPs do not indicate that such a clarification took place. A clarification was needed all the more as the situation of the requests had become confusing because of the great quantity of filed and amended requests. As the minutes of the OPs do not contain a list of all requests on which the decision was based, the statement of the applicant that it had not withdrawn request IV is credible in view of the numbering of the requests. If it had had the intention to replace auxiliary request IV it would hardly have filed the request as additional auxiliary request VI. [6.5]

The principle that the EPO is bound by the text submitted or agreed by the applicant is a procedural principle of so fundamental importance that each violation of the principle, even if it is due to an erroneous interpretation of a request, must be considered to be a substantial procedural violation (T 647/93 ; J 19/84). [6.7]

To read the whole decision (in German), click here.