Tuesday, 17 August 2010

T 759/09 – Looking Under The Carpet

This decision deals with the refusal of an application by the Examining Division (ED). In its decision the ED held that the application did not meet the requirements of A 84 for lack of clarity. It also commented on added subject-matter and lack of inventive step, though these comments were said not to form part of the decision.

The Board answers the question whether it can deal with the inventive step assessment:

Though the decision under appeal mentions clarity, the Board has chosen to exercise the power afforded it under A 111(1) to examine the application for other requirements as foreseen in G 10/93 [headnote]. For assessing compliance of amendments with A 123(2) this goes without saying.

As concerns inventive step the appealed decision in point 2 of the section “additional comments” said not to form part of the decision, refers to an objection raised in paragraphs 2.4 to 2.7 of the communication of 19 October 2007 issued in examination and which the division still held to be valid. The relevant paragraphs set out in a reasoned manner the case against inventive step, starting from a document D1, that is EP-A-0 882 424.

Even if this reasoning has not been included as formal ground in the decision under appeal - though it could and should have been (the underlying need for procedural economy would not require the reasoned statement of a communication under R 71(2) to cover “all the grounds against the grant” unless the reasoning of a first instance decision under R 111 were equally comprehensive) - it is evident that a first instance consideration of the issue of inventive step has already taken place. The Board has therefore also extended examination to this requirement.

If you wish to download the whole decision, please click here.