Tuesday, 16 March 2010

T 897/09 – How Not To Substantiate An Appeal

The present decision is a sad example of how a notice of appeal should not be written. It was the applicant himself who defended his application (the professional representatives had withdrawn, for reasons unknown).

The notice of appeal was handwritten and very short; it read:

The Board sent the appellant a communication stating that the appeal was likely to be rejected as inadmissible and giving him the opportunity to present arguments. The appellant did not reply but sent the following letter of complaint to the “Head of the Patent Office” [unfortunately not available on RegisterPlus]:

Dear Sir.

I am greatly disappointed with the communication from the board of appeal; which seem biased as I dismissed the poor work of [the former professional representative] on the grounds of discrimination of me as a Danish citizen. I hope that this is not the case for the patent office and must insist on unbiased evaluation of the patents.

They did not review the accompany letter from October 2008 that contained the argumentation for allowing the patent and should be reviewed together with the final changes submitted in March 2009. Their evaluation was wrong because non of the methods can be used alone and if they were they would give erroneous results. This is the reason why we have identified several mechanisms of bacterial resistance and why a lot of people have died in vain as antibiotics have been used in combination to induce cancerous growth with metastasis if broad spectrum antibiotics are used and encapsulated cancers if penicillins are used.

Furthermore the experts seem very unfamiliar with the terminology used in bacteriology and antibiotic susceptibility in general hence the comment that we did not mention bacterial growth or antibiotic susceptibility. I called it organism growth as it covered viral and fungal growth as well as bacterial growth and bacteriocidal and bacteriostatic actions are standard terms for antibiotic susceptibility testing of compounds alone or in combination and refers to whether they kill the bacteria or just inhibits growth. The people evaluating the patent seem to have no experience in evaluating either instrument specifications or bacteriology which may explain the extraordinary difficulty in their understanding of the subject and their totally irrelevant comments.

The board only commented on a handwritten follow note and did not bother to review the altered claims that clearly distinguish the patent 05256971.2 from other methods and specifically to the cited passage in D1;
I.e. claim 1,2 and 9 addition: Using a micro calorimeter with a baseline stability of 0.2 uW and a sensitivity of O.2 uW
Claim 8 addition;
Using a micro calorimeter with a baseline stability of O.2 uW and a sensitivity of 0.2 uW is able to detect heat changes of 25 nanocalories per second

I demand a re-evaluation by an expert in instrument development and bacteriology

Here is what the Board had to say on this appeal:

While the appellant’s letter to the “Head of the Patent Office” makes no attempt to answer the Board’s communication or to deal in any other manner with the question of the admissibility of the appeal, the Board has decided to consider it and to issue this decision rather than just treat the patent application as deemed to be withdrawn as would be possible in the absence of a reply to the communication, as indeed the appellant was warned both in the communication itself […] and in the EPO form 3346 under cover of which it was sent. There are two reasons for doing this. First, although the appellant’s letter [to the Head of the EPO] does not make any substantive response to the Board’s communication, it does at least indicate that the appellant has not lost interest in its patent application. Accordingly, although the salient facts are slightly different, the position is comparable with that described in T 1382/04 [1] and the Board has the power to issue a decision on the appeal. Second, this decision will hopefully ensure that the appellant (which is no longer represented professionally and is apparently unfamiliar with European patent proceedings) understands that, by virtue of this decision dismissing the appeal, the decision of the Examining Division (ED) to refuse the patent application becomes final and therefore no purpose would be served by payment of the unpaid part of the fifth renewal fee. [1]

The appellant complied with the time limits for filing the notice of appeal and written statement of grounds of appeal and paying the appeal fee (see A 108). However, the appeal is inadmissible as regards the requirement of substantiation. A 108, third sentence, provides that, within four months of the notification of the decision in question, an appellant must file a statement setting out the grounds of appeal. [2]

[…] R 99(2) requires an appellant to indicate in its statement of grounds the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based. Additionally, Article 12(2) of the Rules of Procedure of the Boards of Appeal requires that a statement of grounds of appeal shall contain a party’s complete case and set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on. Similarly, the case-law of the Boards of Appeal has consistently considered it to be incumbent on an appellant to file, by the end of the four month time limit, a statement of grounds which (either in itself or together with the notice of appeal) presents the Board with the appellant’s case why it considers the decision under appeal to be wrong. [3]

[…] Having compared the contents of the notice of appeal and the statement of grounds of appeal with the content of the decision under appeal, the Board cannot ascertain from the notice or grounds of appeal any substantive arguments or reasons why the appellant disagrees with the reasons for rejecting its patent application or, apart from some unexplained amendments to the claims, how it proposes to overcome those objections.

In particular the Board notes the following.

(a) The appellant does not say why the Examining Division’s view that the method claim 1 is anticipated by D1 was wrong, let alone take issue with its analysis demonstrating that all the features of claim 1 are to be found in D1. […]

(c) The grounds of appeal say “Hereby the amendments to the claims as specified in your letter of 16.1.2009” but give no further information. The words “as specified in your letter of 16.1.2009” (i.e. the decision under appeal) are of no assistance at all - they simply direct the reader to the decision without any indication how the amendments relate to the objections therein. The later statement in the grounds of appeal that the claims have been amended to contain “the issues corrected raised on page 2-3 of your letter” adds nothing since those pages contain all the substantive reasoning of the decision under appeal. It then says the claims have also been amended to contain “specifications for the microcalorimeter used in the application”; that could be a reference to the ED’s observation […] that none of the features assumed by the applicant to differentiate its invention from the methods of D1 could be found in claim 1, but without more that can at best only be surmised. The Board notes that claim 9 has apparently been amended but there is no explanation at all as to how that may overcome the ED’s objections. Indeed, there is no reference to, let alone explanation of, any one amendment at all.

(d) As regards the ED’s objection under A 123(2), the notice of appeal and the grounds of appeal say respectively that the relevant material is or has already been withdrawn but no further information is given and no amended text has been filed.

(e) After referring to the unexplained amendments to the claims, the grounds of appeal state that the added specifications have not been achieved by anybody else in the world and that this gives the appellant the ability to diagnose and treat diseases faster and more effectively than previously. However, in the absence of any reference to the decision under appeal or to prior art cited therein, these are no more than mere assertions which do not make any case against the decision.

(f) There is no other statement whatsoever which can be read as argument against the reasons set out in the decision under appeal. The notice of appeal says “We will include the relevant subject-matter in claim 1 and explain why the microcalorimeter D1 would not be suitable.” However, no indication is given of what that relevant subject-matter in claim 1 is - if it is meant to indicate the amendments, then as already indicated they are not explained at all. The Board can find no explanation as to why the microcalorimeter of D1 would not be suitable. [4]

The Board’s communication quite specifically stated that it was confined to the issue of admissibility of the appeal and was intended to give the appellant an opportunity to present arguments on that issue. Unfortunately, the appellant’s letter [to the Head of the EPO] is not only not addressed to the Board but also shows no attempt to explain how the notice of appeal and grounds of appeal contain a sufficiently ascertainable case.

The appellant’s complaints that the Board is biased and not expert in its evaluation of the case is irrelevant since no evaluation of the substance has yet taken place in the appeal proceedings and cannot take place unless or until the admissibility of the appeal has been established. [5]

[…] Taken as a whole, the appellant’s letter [to the Head of the EPO] shows that it expected the Board to piece together its case from a number of documents including earlier correspondence and versions of claims. That however is exactly the exercise the Board is not required to undertake because the appellant is required to substantiate its case adequately in its grounds of appeal.

In the circumstances, the only possible conclusion is that the appeal is unsubstantiated and therefore does not comply with A 108, R 99(2) and Article 12(2) RPBA. Accordingly the appeal is inadmissible. [7]

I am not sure that it would have been possible to save this particular application by filing an appeal, but one thing is sure: that it is not wise to file an appeal without the help of a trained professional. Things that may work out elsewhere, such as whining, boasting and complaining with the hierarchy, have little chances of constituting an admissible appeal.

NB: Parallel case T 950/09 has been discussed by Laurent Teyssèdre on his blog.

To read the whole decision, please click here.