Monday, 11 January 2010

T 422/07 – Overzealous But Not Partial

Is it a good thing to have Examiners who are EQE-proof ? Well, it should do no harm to have legally competent interlocutors in first instance proceedings. Sometimes, however, deeper knowledge of patent law and its hot spots might make Examiners feel that A 54, A 56 or A 123 are boring stuff and that there are more exciting things to be discussed in notifications. Maybe this is what happened in the present case.

Be that as it may, the applicant, after having filed a second generation divisional, received an unusual notification from the Examining Division (ED):

“Present claim 1 is directed to essentially the same subject-matter as claim 1 of the parent application as granted, as well as claim 1 of the grandparent application as granted, but attempts to define this subject-matter in broader terms than the parent application. However, the examining division is of the opinion that claim 1 of the parent application as granted did not contain any nonessential features, and that each of the features that have now been omitted is in fact indispensable for claim 1 to satisfy the requirements of Articles 76(1), 84 and 52(1) EPC. […] These matters were already discussed at length and in every detail during the examination of the parent and the grandparent application, in particular during the oral proceedings held in respect of each of these applications.

In addition, only a single invention was defined in [the application] as originally filed. The present application therefore would not appear to result from an apparent lack of unity within its parent application but rather from the desire to avoid a final decision on the scope of protection derivable from the original application. This is considered an abuse of the instrument of a divisional application since it has the effect that the EPO is prevented from fulfilling one of its essential tasks which is to serve the interest of the public in knowing the scope of protection finally resulting from a European patent application as soon as possible.

The examining division is convinced that cascaded divisional applications must not be used for the mere purpose of evading a decision by an instance of the EPO considered unsatisfactory by the applicant since this would render any substantive examination carried out by the EPO meaningless. If such a practice was allowed, applicants could keep the public in a state of uncertainty about the final scope of protection derivable from a patent application until the very end of the term of a European patent fixed in Article 63 EPC. This would clearly be most detrimental to economic development which the patent system is supposed to promote.

In the examining division’s opinion, the present second generation divisional application aims at reopening and continuing the discussion on the scope of protection that might be granted by the EPO in respect of the invention already claimed in both the grandparent and the parent application. This is considered incompatible with the true and only purpose of a divisional application which is to allow applicants to divide out a part of an application not linked with the remaining part by a common inventive concept within the meaning of Article 82 and Rule 30 EPC.

The above conclusions would appear to be in line with the guiding principle of the decision T 797/02 according to which "the examining procedure at the EPO must be conducted in such a way as to ensure that, within a reasonable period of time after the filing of a patent application, the public should have a fair knowledge of the extent of the exclusive rights sought by the applicant", and according to which it would be unacceptable "to leave the public completely uncertain during most of the life of a patent as to how much of the subject-matter of the original patent application might still be claimed" (see point 2.2 of the reasons).

As regards the decision T 587/98, which might also be considered (cf. the Guidelines C-VI, 9.1.6), it is noted that this decision, in contrast to T 797/02, is not concerned with cascaded divisional applications, but rather with the problem of double patenting, and that the A <--> A plus B situation referred to in this decision does not prevail in the present case since none of the claims of the parent application as granted includes al1 the features of present claim 1 plus an additional feature. The decision T 587/98, therefore, is not considered to be particularly relevant to the present case.

For the above reasons, the examining division considers the present application an invalid divisional application, and it appears that it may have to be refused, if for this reason alone. […]” 

After a discussion of why A 76 was violated by the divisional application, the notification went on :

“lrrespectively of the objection raised at point 1 above, it would definitely expedite the examination of the present application if the applicant did not insist on discussing issues again, that have already been discussed in the proceedings for the parent and/or the grandparent application, given that it is unlikely that the examining division would change its mind on matters already decided, unless the applicant presented new facts or evidence.

However, if the applicant so wished, and supposing that the fundamental deficiency mentioned at point 1 above can somehow be overcome, the examining division would of course reiterate its objections against the omission of features like […] » 

The applicant raised an objection of partiality, against the primary Examiner, which appears not to have had any tangible effect. The application was finally rejected because the ED considered “the present application as an ‘abuse’ (in a purely technical, rather than a moral sense) of the instrument of a divisional application”. The applicant filed an appeal. The Board decided to comment on the partiality issue:

While it is acknowledged that the style of the first communication issued by the ED on 7 October 2005 might have created the impression that the opinion expressed therein would have been definitive and hardly affected by later arguments to be presented by the appellant, the Board does not identify in the file wrapper any evidence that the right to be heard would have actually been denied in the course of the ensuing examination procedure. In particular, the detailed minutes of the oral proceedings (OPs) before the ED on 8 September 2006 reveal that the appellant had well the opportunity to defend his views before the first instance’s department. There is also no evidence that the arguments put forward by the appellant/applicant would not have been considered by the ED before it reached its decision. On the contrary, the decision to refuse the application does address such arguments which were put forward by the applicant during the preceding written and oral proceedings. [2.1]

In conclusion, the suspicion of partiality appears to result essentially from the impression produced by the wording of the first communication, for which the primary examiner later apologized, and is not corroborated by any later behaviour which would have fundamentally affected the procedure before the ED so as to bias its decision. For these reasons, the Board does not regard a remittal to the first instance’s department under Article 11 RPBA to be justified. [2.2] 

The Board then adds some interesting comments concerning the “abuse of the instrument of a divisional application”:

In decision G 1/06 [headnote and 13.5] the Enlarged Board of Appeal (EBA) ruled that: “In the case of a sequence of applications consisting of a root (originating) application followed by divisional applications, each divided from its predecessor, it is a necessary and sufficient condition for a divisional application of that sequence to comply with A 76(1), second sentence, that anything disclosed in that divisional application be directly and unambiguously derivable from what is disclosed in each of the preceding applications as filed”. It further held in section 13.3, with regard to the principle according to which the public should have a fair knowledge of the extent of the exclusive rights conferred by a patent, that this principle “is no basis for the boards of appeal or other instances of the EPO themselves to restrict the rights of applicants in a manner not warranted by any specific provision of the EPC, such as R 25(1) EPC”.

Applied to the decision in suit, the conclusion arrived at by the EBA implies, contrary to the view expressed by the ED in its refusal, that no abuse can be identified in the mere fact that the claims of the application on which the ED had then to decide had a broader scope than the claims granted in relation with the parent application. The same conclusion applies to current claims 1 to 3 according to the current sole request on file, the subject-matter of which partly overlaps with the subject-matter of the claims granted in relation with the parent application. It follows that the issues that have to be decided in relation with the current request concern the requirements set out in A 123(2) EPC 1973 and A 76(1) EPC 1973 regarding added subject-matter, A 56 EPC 1973 as to inventive step and clarity in the sense of A 84 EPC 1973. [3] 

Finally the Board remitted the case to the ED with the order to grant a patent.

To read the whole decision, click here.