T 1854/08 - Notifications by E-mail and Other Procedural Shortcomings

I owe the knowledge of this decision to Laurent Teyssèdre, who has discussed it on his blog (in French).

After having been summoned to oral proceedings (OPs), the applicant filed a new main request and first and second auxiliary requests. In his letter, he requested consequently that a patent be granted on the basis of one of those requests. [III]

On 27 November 2007, the Examinig Division (ED) sent an e-mail to the applicant with the following content: “Dear Mr. White, the ED has discussed the three new requests filed with letter of Nov.5. (I.) These requests are not admitted into the proceedings, pursuant to R 86(3), because they introduce substantial obscurities (A 84). […] (IV.) If no new request is filed which is admissible under R 86(3), then the OPs will be based on the request on which the summons to OPs was based.” [IV]

The applicant did not attend the OPs. At the OPs, the application was refused on the basis of the claims which had been objected to in an annex to the summons to OPs. [V]

[…] In deciding on the basis of the set of claims filed [before the summons to OPs], the ED decided on the basis of a set of claims which was no longer agreed by the applicant because new requests had been filed with letter of 5 November 2007. From this letter, it could be clearly and unambiguously derived that the new main and auxiliary requests were meant to replace the claims filed before. This follows from the fact that the applicant requested in his letter that a patent be granted on the basis of one of the newly filed requests. Hence, deciding on the basis of the old set of claims contravenes directly A 113(2), where it is stated that the EPO shall examine, and decide upon, the EP application only in the text submitted to it, or agreed, by the applicant. [2.1]

By an e-mail of 27 November 2007, the applicant was informed that the three newly filed requests were not admitted into the proceedings, because they introduced substantial obscurities. The applicant was not given any opportunity to present his comments to overcome the negative position expressed in the e-mail. Contrary to that, he had to gather from the e-mail that it was no longer possible to convince the ED. This follows from the fact that the refusal to admit the newly filed request was not presented as a provisional opinion of the division to prepare a discussion in the forthcoming OPs but as a decision which could not be overturned. In the e-mail, it is clearly expressed that “if no new request is filed which is admissible under R 86(3), then the OPs will be based on the request on which the summons to OPs was based”, i.e., that the requests filed on 5 November 2007 were no longer under consideration. This contravenes A 113 (1) where is laid down that the decisions of the EPO may only be based on grounds on which the parties concerned have had an opportunity to present their comments. [2]

As contravening A 113(1) and (2) constitutes a substantive procedural violation, the Board remits the case to the department of first instance for further prosecution (Article 11 RPBA). [3]

Moreover, it is questionable whether an e-mail can constitute a communication under A 96(2) EPC 1973 to file observations within a period to be fixed by the ED. However, as the case has to be remitted for the above mentioned reasons alone, this point has not to be decided in the present case. [4] 

I like the understatement: “It is questionable ...”

To read the whole decision, click here.