Thursday, 9 December 2010

T 1903/06 – We Are Not Always Nice

Sometimes a zero changes everything …

Yesterday we have seen decision T 193/06 where the Board remitted a case to the first instance although the claims on file were not allowable as such. Although the applicant was not represented during the oral proceedings (OPs) before the Board, the Board felt that “a dismissal of the appeal due to the remaining deficiencies in the request would not be justified”. The Boards are not obliged to do so, and indeed they sometimes do not, as decision T 1903/06 shows. 

Again, the Board deals with an appeal following the refusal of an application by the Examining Division (ED). The appellant requested OPs but then decided (and announced the day before the OPs) that it would not attend. Perhaps this was not a very good idea.

[2.1.5] In summary, claim 1 of the main request does not meet the requirements of A 84 concerning clarity and support by the description.

[2.2] Claim 6 of the main request has the wording
“In a method of a magnetic resonance imaging ..., characterized in that ..., wherein the coil ..., and the method comprising ...”.
This formulation is inadequate and renders the claim unclear.

[2.3] Claim 7 of the main request is deficient in that it refers to “claim 7”.

Auxiliary request

[3] The auxiliary request is not allowable too (sic). The considerations mentioned above […] also apply mutatis mutandis to claims 1, 5 and 6 of the auxiliary request.

Procedural matters

[4] According to R 115(2), if a party duly summoned to OPs does not appear as summoned, the proceedings may continue without that party. Article 15(6) RPBA prescribes that a case should normally be ready for decision at the conclusion of oral proceedings. Furthermore, according to A 113(2), the Board shall decide upon the patent application only in the text submitted to it, or agreed, by the applicant.

[4.1] In the present case, the appellant requested OPs, as an auxiliary request, with the notice of appeal. On 10 March 2009 the appellant was duly summoned to OPs scheduled to take place on 27 May 2009. A communication dated 24 March 2009 was issued in preparation for the OPs. As mentioned in paragraph V of this communication, any written submission should have been filed at the latest one month before the OPs. The appellant’s representative, however, did not make any further submission apart from informing the Board on 26 May 2009 that he would not attend the OPs. The OPs thus took place in his absence. In such a case, according to Article 15(3) RPBA the appellant may then be treated as relying only on its written submissions.

Under these circumstances, the Board took a decision at the end of the OPs on the basis of the appellant’s main and auxiliary requests on file. The decision is based on the ground under A 84.

[4.2] In G 4/92 [10] the Enlarged Board of Appeal held that
“As regards new arguments, the requirements of A 113(1) have been satisfied even if a party who has chosen not to appear consequently did not have the opportunity to comment on them during OPs, insofar as such new arguments do not change the grounds on which the decision is based. In principle, new arguments do not constitute new grounds or evidence, but are reasons based on the facts and evidence which have already been put forward.”.
In the present case, issues under A 84 in relation to the main and auxiliary requests on file were addressed in the Board’s communication of 24 March 2009 as well as in the decision under appeal by way of referral to an examining division’s brief communication of 17 May 2006. Thus, the appellant had an opportunity to present its comments on this ground (A 113(1)). New arguments mentioned in the present decision do not offend the right to be heard in agreement with G 4/92, insofar as they do not change the ground for the refusal of the application.

[4.3] The Board is aware of the fact that the objections mentioned against the main and auxiliary requests on file could have been met by suitable amendments, if the appellant’s representative would have been present at the OPs. However, the Board has to decide upon the application only in the text submitted to it by the appellant (A 113(2)). In this respect, the Board agrees with the following conclusions in decision T 1000/03 [2.5] (NB : the Board cites the following text in German):
“The duly summoned appellant could have easily remedied the deficiency mentioned above as well as several other minor deficiencies during the OPs. There was no need to postpone the decision in order to remedy them (cf. Article 11(3) RPBA). In application of A 113(2) the Board has to stick to the text submitted to it by the applicant. By not attending the OPs, the appellant has accepted the risk that the application might be rejected even if the deficiencies could have been easily remedied.”
Thus, the appellant has to bear the consequences of the failure to appear at the OPs before the Board.

The appeal is dismissed.

Should you wish to download the whole decision, just click here.


Rimbaud said...

It sounds unbelievable, but this zero is not fortuitous: BoAs assign numbers to their cases on their own volition.
This is made to help EQE candidates better memorize the decisions.

oliver said...


Anonymous said...

(part 1/2)

Dear Oliver,

If you were to look at the file's history, you will see that the Board HAD BEEN very applicant friendly, but was left in the end with no other alternative but to issue a refusal.

In the summons to the Oral Proceedings the board actually proposed a text for claims which was considered to meet the requirements of Article 84 EPC. All the applicant had to do was to acknowledge this proposal and formally submit them together with the necessary adaptations to the description in order to satisfy Article 113(2) EPC.

Instead, the applicant didn't bother at all, and merely contacted the Board using e-mail to announce his absence (even though any representative should know that this channel is not suitable official communication).

Had the board remitted the case to the examining division, the latter could have been placed in a somewhat awkward decision. The applicant decided not to shown up either at the examination OP, but requested instead a decision according to the state of the file. The last sentence of Article 116(1) EPC provides that the EPO may reject a request for further oral proceedings before the same department where the parties and the subject of the proceedings are the same. This means that it would have been preferable for the division to hold the OP even in the applicant's absence in order to avoid having to summon them anew years down the road, with no guarantee of progress. I think there might be case law on this, but I don't know anyone who ever invoked this provision. So it's a good thing the Board concluded the case.

The question of clarity had already been raised by the first examiner in the supplementary note issued in reply to the applicant's ultimate submissions.

Anonymous said...

(part 2/2)
Such notes are issued as examiners fear that applicant's may not show at an OP, and that a decision contravening Article 113(1) EPC be issued (e.g. the applicant refuses to budge for a long time, but suddenly file amendments which shift the issue from a blatant lack of novelty to inventive step). The other alternative is to resume the procedure in writing, which is hardly a more pleasant option.

I once wrote as many as twenty pages of observations in three separate notes in the few weeks before an OP in reply to the flood of new requests filed, as I am always fearful that the applicant may not show up, and that a decision be taken on newly introduced grounds (e.g., the issue suddenly moves from plain novelty to inventive step), or that the written procedure be resumed. This is very stressful, especially considering that the other members of the division are often unavailable to discuss the case.

The examining division does not have at its disposal Article 13(3) of the RPBA for handling late submissions, but instead Rules 137(3), 137(4) and 116(1) EPC, which can be tricky to invoke without a good substantive reason. Since Article 113 must also be respected, this sometimes results in accelerated detailed examination.

How could Oral Proceedings be really used as a method for efficiently concluding a procedure? These are really meant for giving an opportunity for the applicant to speak face-to-face with ALL members of the division, and eventually convince them. Today these are all too often simply seen as a means for stalling an unfavorable decision, with applicants having no real intention of actually attending.

I note that in the present case the applicant could have sent someone down to the OP in Munich for quite probably less than the cost of an appeal and the renewal fees which were paid in the three years which the board required to reach a decision.

Concerning the "special" case number, I'd be very much surprised that these are actually chosen. The DG3 Registrar simply assigns a case number before the Board is selected, and at that point in time one can hardly predict whether this case will make an interesting booby trap for EQE candidates a decade down the road...

Finally, may I suggest that you provide in your future interesting comments a link to the file history in the Register in addition to the one to the DG3 decision?

oliver said...

Thanks for having taken the time to write this very instructive comment.

I stand corrected, at least for the somewhat provocative title. I definitely should have studied the file history in more detail.

What I wanted to point out is that the Boards have some latitude on how to deal with minor deficiencies when the applicant is absent from oral proceedings, and that both a remittal and a dismissal of the appeal are possible options, which is a good reason to come to the oral proceedings.

I agree that in the second case the applicant most likely was not interested in its application any more and that "niceties" were not appropriate.

One of the difficulties a case law commentator has to face is that there are always also invisible facts and attitudes that influence the decisions. Sometimes they would not even appear in the documents that are kept in the Register. Having said this, I find your idea of a link to the Register attractive.

As far as the case numbers are concerned, this was, of course, a trait d'esprit of my friend Rimbaud, and not to be taken seriously. It made me laugh though. ;-)

Rimbaud said...

Thanks Anonymous for this very instructive insight.

I was kidding, of course, about the case number.