T 1123/09 – Munich Won’t Have It The American Way

Last year decision T 2321/08 created quite a buzz in the EPO and in informed circles: the Examining Division (ED) had rejected an application because the applicant had not cited certain prior art documents known to it. The Board found the ED’s interpretation of R 42(1)(b) unacceptable and concluded that this rule did not put a stringent obligation on the applicant to acknowledge prior art known to him, and to cite documents known to him reflecting this prior art, already at the time of filing the application. According to the Board, no requirement of the EPC prohibits amending an application in order to meet R 42(1)(b).

The present decision confirms this approach. For the time being, the EPC has no equivalent to the duty to disclose prior art before the USPTO.

[…] Documents [D2 and D3], which originated from the applicant, were not cited in the application as originally filed. The department of first instance considered that R 42(1)(b) EPC (R 27(1)(b) EPC 1973) had to be interpreted such that an applicant has the obligation to cite any documents which, as far as known to the applicant, can be regarded as useful for understanding the invention, for drawing up the European search report and for examination in the application as originally filed and that, if the applicant did not cite documents it is deemed to have known, this obligation can not be met by acknowledging the documents in the description only after they have been cited in the search report.

The facts on which case T 2321/08 was based were that several documents cited in the search report were not acknowledged in the application as filed although one of the named inventors of the application was an author of those documents. Consequently, the applicant was deemed to know these documents. As the documents were not cited in the application as filed and this objection could not be overcome at a later stage according to the ED, the application was refused under R 42(1)(b). These facts are substantially identical to those underlying point I of the decision under appeal in the present case except that D2 and D3 do not give the name of the author, so that in this case the connection is only that they emanate from the applicant company.

The present board agrees with the reasoning of T 2321/08 and adopts points 2 to 9 of the decision in the present case.

Accordingly the board judges that Rule 27(1)(b) EPC 1973 has to be applied instead of Rule 42(1)(b) EPC, these rules being substantially identical, that Rule 27(1)(b) EPC 1973 was incorrectly applied in the decision under appeal and that the appellant has the right to amend the description to acknowledge D2 and D3 following the objection raised by the ED. [3] 

The Board then concluded that the use of a new and unsupported principle by the ED constituted a substantial procedural violation and ordered the reimbursement of the appeal fee.

To read the whole decision, click here. 

NB: This decision has also been commented here (in French).