Thursday, 17 February 2011

T 625/09 – A Question Of Tonality

The following decision deals with a request for reimbursement of the appeal fee in a case where the Examining Division (ED) had granted interlocutory revision.

*** Translated from the French ***

[2.1] In order for a request for reimbursement to be allowed, three conditions have to be satisfied.

- the appeal or the petition for review have to be found allowable;
- there has to be a substantial procedural violation leading to the impugned decision;
- reimbursement has to be equitable.

[2.2] The first condition is fulfilled. As far as the substantial procedural violation is concerned, it has been submitted that the examination proceedings had been conducted in a way that did not comply with the criteria of common practice, regardless of the principle of good faith of the applicant.

The deficiencies put forward by the requesting party can be summarised as follows.

The ED has introduced document D9 when it summoned [the applicant] to oral proceedings (OPs). This document had changed the course of the proceedings as it convinced the applicant that its claims had to be amended. From this moment on, OPs were not required because - as the requesting party points out in a slightly contradictory manner – on one hand, only details were concerned and, on the other hand, it could not carry out the required amendments within the time limit set by the ED. The applicant agreed with the substantial analysis offered by the Examiner and, in its opinion, a patent could be granted provided that some minor adjustments were carried out. However, the necessary consequence was a new notification or at least the continuation of the proceedings in writing. In any case, the tone of the Examiner on the phone comforted it in its opinion that there was no use in attending the OPs.

[2.3] First of all, the Board points out that it can base its decision only on objective elements. As far as the telephone conversation is concerned, it only has at its disposal the minutes, the content of which is not disputed, the requesting party complaining about the tone which had dissuaded it from attending the OPs.

[2.4] A 94(3) and R 71(1) give the ED a discretionary power the exercise of which depends on the circumstances of each individual case. Only the violation of a fundamental principle, such as the right to be heard, could justify calling into question the way this discretionary power is exercised (see, for instance, T 1578/05).

[2.5] Here the decisive question is whether the ED has committed a violation of a general principle of procedure by maintaining the OPs and by rejecting the latest set of claims as inadmissible, in the absence of the applicant, instead of sending a third notification, as the applicant would have wished.

[2.6] The Board cannot see any ground for such a procedural violation, for the following reasons. The OPs have been summoned after two notifications of the ED. It is true that document D9 has been introduced at a late stage, but as the requesting party admitted, the amendments that resulted from it were only adjustments. The claims filed in response to the summons to OPs one week before have been rejected, in the absence of the applicant, not only because they were filed belatedly but because they lacked clarity and did not comply with A 123(2). Finally, in its letter dated July 27, 2009, [sent] during the interlocutory revision phase, the requesting party precisely “adjusts” the points raised in the paragraph “additional remarks” of the decision of October 20, 2008. It follows from this sequence of events that the deficiencies of the set of claims that was rejected and subsequently accepted could have been overcome during the OPs. Leaving aside the tone and the aggressiveness mentioned by the requesting party – which correspond to an unverifiable experience – the terms of the minutes dated September 8, 2009, received by the requesting party are clear. On one hand, they express an opinion (“The new claims are not admissible pursuant to R 116(1) and the Guidelines E-III 8.6 because at first sight (a priori) (emphasis by the Board) they do not comply with the requirements of A 84 and A 123(2)”), on the other hand, the deficiencies raised are of the kind that generally appear when new requests are filed and which find a solution during the OPs in the case of late filed requests. As a matter of fact, the OPs had been maintained at the original date.

[2.7] It follows from the minutes together with the additional remarks of the decision that the admissibility of the filed claims, which have led to the interlocutory revision, could not be excluded at once.

[2.8] Contrary to the submissions of the requesting party, an objective assessment of all of the stages of the examining proceedings […] leads one to think that the OPs could have played their role of allowing the requesting party to finalize the claims it had filed together with the statement of grounds of appeal, without further extending the proceedings.

The position of the requesting party, which consists in judging in advance that these proceedings were useless, cannot be justified. By choosing the option of OPs rather than a third notification, the ED has acted within the margin of manoeuvre provided by A 94(3) and R 71(1). In the absence of other facts that would infringe the principle of good faith, the Board cannot find any ground for a substantial procedural violation.

[2.8] Under these circumstances, the Board cannot see how the good faith of the requesting party would have been surprised. […]

The request for reimbursement of the appeal fee is dismissed.

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