The present decision deals with an appeal against the decision of the Examining Division to refuse the patent.
On 18 December 2008, the Board issued a communication pursuant to Rule 5(3) RPBA expressing doubts about the original basis of amended claim 1. Construing claim 1 broadly, the Board also came to a negative preliminary conclusion regarding the novelty of the claimed system with respect to D1. Pursuant R 100(2), the Board invited the appellant to file observations within a period of four months (expiring on 28 April 2009).
By a facsimile letter of 22 April 2009, the appellant requested an extension of time for filing the appellant’s comments on the Board’s communication. At the same time, the appellant requested oral proceedings (OPs) in the event that the prosecution of the application could not be resolved satisfactorily in writing. No comments were filed within the time limit. The request for an extension of the time limit was refused.
Therefore, the question arises whether the mechanism of R 100(3) operates, in which case the application is deemed withdrawn.
According to R 100(2), the appellant has been invited to file observations on the Board’s communication dated 18 December 2008.
Failure to reply to such an invitation in due time would result in the application being deemed withdrawn (R 100(3)). Hence, before deciding on the present case, the Board has to ascertain that a reply meeting the requirements of R 100(2) has been received in due time. If no response qualifying as a reply has been received, the case is not pending any more. The question arises because the appellant has not made any substantive observation on the Board’s communication. [1]
Historically, the legal instrument of a deemed withdrawal was introduced for administrative reasons as a means to save resources of patent offices and courts in cases where the applicant or appellant has clearly lost its interest in prosecuting an application. [1.1]
In the present case, the Board considers the request for OPs which was received within the time limit for filing observations as a reply avoiding a deemed withdrawal under R 100(3) since it cannot be assumed that the appellant has lost his interest in the application while requesting OPs at the same time, apparently with a view to present his comments on the Board’s arguments orally. Thus, the Board concurs with a corresponding finding in decision T 861/03 [6.2]. [1.2]
Hence, the present case is pending and, consequently, the Board has the power and obligation to issue a decision on the appeal. [1.3]
NB: This decision has already been commented here (in French).
To read the whole decision, just click here.
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