Saturday, 2 January 2010

T 1302/06 – Minutes Cannot Replace Missing Reasons

[…] The reasons for the contested decision are limited to novelty (it indicates the distinguishing features of claim 1 with respect to the closest prior art) and inventive step (the device not being obvious over D1 to D3). There is no discussion on if and why the amended documents satisfy the other requirements of the EPC and in particular A 123(2) EPC. [4]

Reasons that are limited to such an extent do not form a logical base for the statement made in the decision that “… the European patent and the underlying invention satisfies the (i.e. all) requirements of this Convention.” The fact that the Opposition Division (OD) has, according to the minutes, expressed the opinion that claim 1 as amended satisfies the requirements of A 123(2), does not alter this finding because a corresponding statement is not justified or even made in the contested decision. Thus the decision leaves open whether the feature of an input device integral with the moving unit – which is not explicitly cited in the original documents but which is essential for the assessment of inventive step – was originally disclosed and is part of the invention. However, without determination of the object of an invention it is impossible from the outset to have a conclusive argumentation concerning inventive step. Moreover, the result of the examination of the object of the invention as such is subject to the obligation to give reasons under R 68(2) EPC 1973 (now R 111(2) EPC), not to mention the fact that that an implicit disclosure, which appears to have been considered by the OD, also needs to be justified, for factual reasons. [5]

Therefore the reasons for the contested decision are incomplete and inconclusive on several grounds and, thus, objectively incomprehensible. [6]

A decision founded on reasons that are deficient to such an extent is not “reasoned” within the meaning of R 68(2). Such deficiency constitutes a substantial procedural violation that necessitates to set aside the decision and to remit it to the first instance. [7] 

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