Tuesday, 26 January 2010

J 5/07 – Not All Reactions Are Valid Responses

By communication of the Examining Division (ED) dated 16 March 2005 the appellant was invited to file observations according to A 96(2) EPC 1973 within a period of 4 months. No observations were received by the EPO by 26 July 2005. On 5 August 2005, the appellant requested further processing of the application and paid the prescribed fee, but did not file any observations in response to the ED’s communication. By a letter dated 13 September 2005 the appellant was informed that the application was deemed to be withdrawn under A 96(3). By decision dated 29 December 2005 the request for further processing was rejected for the reason that the omitted act was not completed in due time. The appellant filed an appeal against this decision on 7 March 2006 and paid the appeal fee simultaneously. The appellant argued essentially that he had filed a divisional application based on the present application.

The decision under appeal correctly refused the appellants request for further processing under A 121 on the ground that the omitted act was not completed in due time. [2]

The omitted act was the failure to submit observations in reply to the communication of the ED dated 16 March 2005 within the time limit of four months as fixed therein according to A 96(2) EPC 1973 being then in force. [2.1]

The expiry of this four months time limit on 27 July 2005 without any reply led to the application being deemed to be withdrawn according to A 94(3). Such a deemed withdrawal shall be retracted under A 121 if the applicant requests further processing of the application within two months of the date on which either the decision to refuse the application or the communication that the application is deemed to be withdrawn (in the present case, the communication noting the loss of rights dated 13 September 2005) is notified, the further processing fee is paid, the omitted act is completed within this two months time limit (A 121(2)) and a positive decision of the ED on the request is issued according to A 121(3). [2.2]

The Board sees no reason to doubt that the filing of a divisional application was a reaction of the appellant to the ED’s objections to the claims of the present application made in its communication dated 16 March 2005. This does not mean, however, that the filing of a divisional application could be regarded as a response to the said communication within the meaning of A 96(2). [2.3]

A divisional application is legally and administratively separate and independent from the grant proceedings concerning the parent application (see G 1/05 [3.1 and 8.1]; T 441/92 [4.1]). The filing of a divisional application leaves the text of the patent application objected to unamended. Therefore, from these considerations no logical or legal basis can be found for treating actions made in a grant procedure for one application (the divisional) as amounting to the procedural step needed to make up for a failure to comply with a time limit to be observed in entirely separate grant proceedings (the parent). [2.4]

According to the appellant’s submissions during oral proceedings the divisional application as filed was identical to the parent application, it was, however, intended to narrow the claims during the further divisional proceedings. However, as the divisional application was identical to the present parent application, no one could have had any reason to assume that this divisional application was intended to be a reply to the communication dated 16 March 2005 in the present parent application. [2.5]

[…] Hence implying that the action of filing a divisional application was sufficient, in the present case, to meet the further processing requirements, as suggested by the appellant, would have been in breach of A 121(2) second sentence, a provision not leaving the requirements to be met in the discretionary power of the department competent to decide on the omitted act (A 121(3)). [2.7] 

To read the whole decision, click here.