Friday, 13 November 2009

T 1590/06 – Ghost Bustering Prohibited at the EPO

In this decision the Examining Division (ED) is criticized for having exterminated claim ectoplasms in its written decision.

[…] According to the minutes of the oral proceedings (OPs) the ED announced orally on March 21, 2006 that the patent application was rejected because the subject-matter of claim 1 did not satisfy the requirements of A 52(1) EPC and A 56 EPC with respect to D3, in combination with common general knowledge. [4]

The corresponding written decision dated May 8, 2006 is also based on an objection under A 56 against independent claim 1 with respect to D3, in combination with common general knowledge. Moreover the reasons for the decision also mention original dependent claims 2 to 6 and the original independent claim 7, for lack of inventive step and lack of novelty with respect to D4, respectively. [5]

However, according to the minutes of the OPs of March 21 the claims 2 to 7 were not part of the request on which the ED had to decide, any more. As a consequence, in the OPs the rejection was justified by lack of inventive step of claim 1 only. [6]

Only claim 1 is enclosed in the minutes of the OPs. The written decision, however, contains this claim as well as claims 2 to 7. [7]

In view of the evidence it is clear that the ED has taken a final decision on the basis of a text which cannot be considered to have been filed or accepted by the applicant. This is a violation of A 113(2) and therefore a substantial procedural violation. [8]

The Board remits the case to the ED.

If I understand the case correctly, the decision pronounced at the end of the OPs was correct. The problem appears to have arisen because the dependent claims somehow crept back into the written decision. The situation being ambiguous, the Board decides to remit the case.

This remittal may be correct from a formal point of view but is perfectly counter-productive because it only delays the final decision. Upon remittal, the ED will proceed to reject claim 1 only, and the applicant will file an appeal. So why not deal with the substantive issues right away ?

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