Thursday, 10 March 2011

T 1905/07 - Too Cool

The present decision deals with the decision of the Examining Division (ED) to refuse an application.

The procedural situation is interesting. After a first communication (June 12, 2006), wherein the ED raised objections under A 54 and A 56, the applicant amended the description as well as the claims. The ED then summoned the applicant to attend oral proceedings (OPs) to take place on May 10, 2007. The applicant filed several requests and offered to discuss the application by telephone in order to either avoid OPs or to facilitate them. There was a telephone call on May 8, 2007. On the very same day, the applicant sent an e-mail to the first examiner, comprising an informal proposal for claim 1. A second telephone conversation took place on May 9, 2007. The applicant’s representative declared that he intended not to come to the OPs but that he would file new submissions to be considered during the OPs. The Examiner reminded him that, in order for them to be considered, the submissions would have to be sent by fax before the opening of the OPs. Still on May 9, the applicant filed several requests, by hand at the EPO in Munich.

The applicant was not represented at the OPs. The ED found no new requests and found the requests on file not to be allowable. It therefore refused the application.

In its written decision, the ED mentioned that
“[t]he submissions filed by hand (thus not via the official fax number) with letter dated 09.05.2007 reached the ED four days after the OPs. Therefore, these late filed submissions were not considered.”
The appellant complained about the use of document D4 during the OPs. It had understood that D4 was only used in combination with document D1 for assessing inventive step. However, the decision was based on D4 alone.

The right to be heard (A 113(1) EPC 1973)

[2.1] Claim 1 of the main request filed in response to the summons to OPs, on which the decision under appeal was based, combines in particular features of claims 1, 12 and 13 as originally filed. D1 was expressly considered by the ED to represent the most relevant state of the art, both in the first communication […] and in the summons to OPs. D4 was considered relevant for additional features of the dependent claims 12 and 13. An inspection of the file up to the telephone conversation on 9 May 2007 shows that the then applicant could expect a reasoning based on a combination of D1 with D4 substantially similar to that raised in the first communication, and had grounds to understand that D4 taken alone did not call inventive step into question.

[2.2] However, the reasoning in the decision is based solely on D4, after the first examiner had outlined a new line of argumentation based on D4 alone for the first time in the telephone conversation on 9 May 2007.

[2.3] The board is of the opinion that such an oral communication could in principle have allowed the then applicant to exercise the right to present comments enshrined in A 113(1), either orally (for instance in the OPs foreseen on the next day) or in writing. However, it has to be borne in mind that presenting new grounds in a telephone conversation should not be equated with presenting the same grounds in formal OPs or in a formal written communication.

Firstly, mere verbal communication by telephone is more prone to misunderstandings, in particular when, as is the case here, no minutes of the essentials of the conversation were available to the representative before OPs took place.

Secondly, a party also has a right to be heard by the organ which takes the decision, i.e. the ED in the present case. A telephone conversation with only one of the examiners of that division does not safeguard this right in the same way as OPs.

Therefore caution is required when there is insufficient time for the party to present comments on new grounds presented only in a telephone conversation. Whether or not a party’s fundamental right to be heard was infringed depends on the particular circumstances of the case.

[2.4] Concerning the objections raised by the first examiner in the telephone conversation the day before the OPs, the board relies on the account given in the minutes which has not been contested by the appellant.

[2.5] The minutes indicate that the first examiner addressed during the telephone conversation one difference (the upper cover being rotatable about a supporting point) between the device of D4, when the arrangement according to figures 1 and 2 was rotated upside down, and the subject-matter of claim 1. He omitted to address the other differences identified in the decision under appeal (the document holder not being moveable with respect to the upper cover; and the supporting mechanism for the image reading unit being movable toward the document holder, with the biasing unit biasing the image reading unit toward the document holder). These further differences contribute to reducing the size of the upper cover, which was identified as the problem to be solved […]. They are therefore clearly essential for the assessment of inventive step and they needed to be dealt with in order to provide a complete reasoning.

As a result, the first examiner provided during the telephone conversation a new line of argumentation based on facts derived from D4 alone which did not deal with a number of features of claim 1, which were essential for the assessment of inventive step.

The reasoning was thus deficient in essential aspects and it did not allow the then applicant to present comments on the essential reasoning later set out in the decision under appeal.

[2.6] In the letter of 9 May 2007 filed in direct reaction to the telephone conversation, the applicant concentrated on D1 and did not hold D4 so relevant as to call for a separate argumentation. The appellant further mentioned in the statement of grounds of appeal that his understanding then was that D4 would be relevant in combination with D1.

[2.7] The board notes that the applicant deliberately chose not to attend the OPs on 10 May 2007. He also repeatedly expressed in writing the wish to avoid the need for OPs. Procedural economy and legal certainty for third parties require that an applicant should not be allowed in this way to prevent an ED from carrying out the examination in an efficient manner, for instance by delaying the decision or postponing the OPs (see also R 71(2) EPC 1973). The same applies to the last-minute filing of amendments. However, the circumstances of the present case are exceptional, because the ED changed essential facts of the case on which it relied in the decision one day before OPs and, more importantly, this reasoning was deficient.

[2.8] From the above, the board is convinced that not all the essentials of the line of argumentation followed in the decision under appeal were communicated to the applicant before that decision was taken. As a result, the decision was based on grounds on which the applicant had no opportunity to present comments, contrary to A 113(1). This deficiency amounts to a substantial procedural violation.

[3] The decision under appeal […] mentions that the new requests filed on 9 May 2007 by the applicant reached the Office one day before the OPs but reached the ED four days after the OPs, so that the decision in the OPs was based on superseded previous requests. The division therefore did not decide upon the application in the text submitted to it or agreed by the applicant. Whether or not in this respect the decision under appeal was contrary to A 113(2) can remain an open question.

Likewise, what the consequences are of the ED noticing the mistake and deciding not to grant interlocutory revision pursuant to A 109(1) EPC 1973 need not be decided in the present case.

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

To have a look at the file wrapper, click here.