T 800/08 – Follow The Guide

It has been decided that an Examining Division (ED) does not commit a substantial procedural violation when it fails to follow the Guidelines, unless it also violates a rule or principle of procedure governed by the EPC or one of the implementing regulations (T 42/84 [9]; T 647/93 [4.1]): the failure of a department of the EPO to follow a procedure set out in the Guidelines does not qualify as a substantial procedural violation as the Guidelines are not legally binding (J 24/96 [4]). But what if the ED does follow the Guidelines and ignores a clear decision of a Board of appeal?

[2.1] The applicant argues that since the omitted feature - the struts - is clearly presented as optional in the previous applications, the three conditions set out in T 331/87 should not be applied to the present case and that therefore, obviously, this feature could be removed from the claim without contravening the requirements of A 76(1).

Both the parent […] and the grandparent application […] specify that one of the objects of the invention is to provide panels “which may have struts”. This wording clearly indicates that the presence of the struts is not compulsory and hence optional. Therefore, the removal of this feature from the independent claim is not subject to the conditions set out in T 331/87.

It follows that since the removed feature was described as being optional in both the parent and the grandparent applications, it can be taken away from the independent claim of the divisional application without extending its subject-matter beyond the content of either of the previous applications as filed and hence without contravening the requirements of A 76(1). Even if a specific strength of the panel has to be maintained while optimising the quantity of foam to be used […], this object is not necessarily to be associated with the presence of struts but can be achieved by other means fully compatible with the invention as claimed.

Refund of appeal fee

[3] According to R 103(1)(a), the appeal fee shall be reimbursed where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation.

In the present case the appellant argued that the ED committed a substantial procedural violation since it refused to take into consideration decision T 331/87.

However, the ED is not bound by any decision of the Technical Boards of Appeal apart from the one concerning the specific case under appeal (see A 111(2)). Since EDs have to follow the instructions of the Guidelines, they were correct in using the conditions as set out therein.

Therefore, since this conduct does not imply any procedural violation, there is no reason to refund the appeal fee.

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