Monday, 9 May 2011

T 1388/10 – Fourty-Three Pleasures

This decision deals with a request for reimbursement of the appeal fee following interlocutory revision by the Examining Division (ED).

The application as filed contained three independent product claims two of which (1 and 22) were directed to a filter and one (18) to a filter element. The European search report contained an objection pursuant to A 84 together with R 29(2) EPC 1973.

In it’s communication pursuant to A 96(2) EPC 1973 dated October 16, 2007, the ED referred to the written opinion of the search report and invited the applicant to amend the application so as to overcome the objection.

In its response dated April 25, 2008, the applicant filed an amended set of claims containing two independent claims, wherein one of which was a limited version of claim 1 as filed and the other was equivalent to claim 22 as filed. The applicant also stated that it reserved the right to revert to the original claims.

The ED then refused the application.

The applicant then filed an appeal as well as a new set of claims. The ED granted interlocutory revision but did not grant the request for reimbursement of the appeal fee.

Therefore, this request had to be dealt with by the Board:

*** Translated from the German ***

[1] In the present case the ED granted interlocutory revision but did not order reimbursement of the appeal fee. Pursuant to R 103(2) it is the board of appeal which would have been competent to deal with the substantive issues of the appeal if no interlocutory revision had been granted that is competent to decide on the request (G 3/03 [answers 1 and 2]). The only remaining object of the appeal is the question of whether the appeal fee is to be reimbursed.

[2] Pursuant to R 103(1)(a), the appeal fee shall be reimbursed in the event of interlocutory revision, if such reimbursement is equitable by reason of a substantial procedural violation. Therefore, it has to be examined whether there have been one or more substantial procedural violations during the examination proceedings, as pointed out by the appellant.

[3] It can be seen from the facts of the case that in its written opinion regarding the European search report the Search Division (SD) raised the objection that the independent claims 1, 18, and 22 then on file did not fulfil the requirements of A 84 together with R 29(2) EPC 1973 (now R 43(2)). The SD justified this objection by pointing out that an application could only contain more than one independent claim in a given category if the subject-matter of the application corresponded to one of the following exceptions:
(a) a plurality of interrelated products,
(b) different uses of a product or apparatus,
(c) alternative solutions to a particular problem, where it is inappropriate to cover these alternatives by a single claim.
The present case did not correspond to any of those exceptions.

[4] The ED adopted the objection of the SD and informed the applicant in its communication dated October 16, 2007, inviting him to file observations within a time limit of four months and/or to amend the application so as to overcome the deficiency. Moreover, the application was told that the application could be refused under A 97(1) EPC 1973 (now A 97(2)) if the deficiency was not overcome.

[5] According to the Board, the objection pursuant to R 29(2) EPC 1973 (now R 43(2)) against the original claims 1, 18 and 22 was clear and unambiguous. The three claims were directed to three different products, i.e. two filters and one filter element, and, therefore, belonged to the same category. The essence of the objection was that the subject-matter of those claims was not “a plurality of interrelated products”, nor did it correspond to “alternative solutions to a particular problem”. That the claims represented “different uses of a product or apparatus” could be excluded by merely considering the claim category because the claims on file were product claims and not use claims […]. Accordingly, the ED expressed the opinion that the above mentioned requirements of R 29(2) EPC 1973 (now R 43(2)) for the allowability of several independent claims of the same category were not fulfilled.

[6] The Board is of the opinion that notwithstanding its concise wording, the objection contained the essential legal and factual reasons which led to the statement in the impugned decision according to which the existence of several independent claims of the same category violated A 84 together with R 43(2). According to its wording, the objection was directed not only to the existence of the then three independent claims 1, 18 and 22 but more generally to the presence of “more than one independent claim of a given category”, which includes the co-existence of two independent claims.

[7] The appellant is of the opinion that the ED would not only have had to give detailed reasons why the original independent claims 1, 18 and 22 did not comply with the requirements of R 43(2) but also whether the objection referred to all three claims or – if not – whether only certain of the parallel (nebengeordnet) claims were concerned. […]

[7.1] It has to be replied that the objection of the ED was worded unambiguously, so that the applicant had no reason to assume that the ED could possibly consider that one or several combinations of two of the three claims 1, 18 and 22 complied with R 43(2). […]

[7.2] Moreover, the burden of explanation and proof for the existence of an exceptional situation (here: an exception pursuant to R 43(2)) lies with the party claiming the benefit of the exception. In the present case, this is the applicant, who is responsible for the wording of the claims and, therefore, decides on how many claims of the same category the application should contain.

[7.3] If an applicant wishes to have more than one claim of the same category and the ED raises an objection against this request, then the applicant has to provide convincing reasons showing that the additional independent requests fall under one of the exceptions listed in R 43(2) (see, e.g. T 56/01 [5] as well as the texts concerning the modification of R 29(2) by the Administrative Council of the European Patent Organisation dated December 10, 2001, CA/128/01, Rev. 2, page 2, number 6).

[7.4] In the present case, the applicant has in no way discharged its burden of proof with its letter dated April 25, 2008.

[7.5] The amendments of the claims, which essentially consisted in that original claim 18 was deleted and claim 1 was further limited by an additional feature, were not suitable for overcoming the objection raised in the statement of November 13, 2006. The set of claims still contained several independent claims of the same category, i.e. the product claims 1 and 18, and there were no reasons given by the applicant as to why it was of the opinion that the independent claims 1 and 18 filed together with the letter of April 25, 2008, could fall under one particular exception pursuant to R 43(2).

[7.6] Quite to the contrary, the applicant reserved the right to revert to the original claims. This follows from the wording “the applicant might come back to the original claims to a later stage” (see letter dated April 25, 2008, page 1, first paragraph).

[7.7] The a posteriori declaration of the appellant, according to which this wording was not meant to contest that the objection of the ED was founded […] cannot change this. Even if this is assumed, the fact remains that the applicant has not presented any reasons why it assumed that the modified set of claims filed together with the letter dated April 25, 2008, complied with the requirements of R 43(2).

[7.8] Under these circumstances the question as to whether the reservation of the applicant only meant to explicitly confirm that the subject-matter of the deleted claims would possibly be the object of a divisional application […] may remain unanswered. The question of how the reservation was meant or to be understood is irrelevant for the present decision.

[7.9] As the procedural situation was at that time, the ED could not know why the appellant assumed that one of the exceptions pursuant to R 43(2) applied. Accordingly, the ED had no reason to revisit its objection under R 43(2) and possibly provide further explanations.

[8] The response of the applicant dated April 25, 2008 filed in response to the communication dated October 16, 2007, which itself refers to the written opinion contained in the extended European search report of November 13, 2006, therefore did not generate any legal necessity for issuing another communication pursuant to A 94(3). All the ED could have done in a further communication was to raise the objection under R 43(2), which it had already raised before, a second time.

[9] The appellant has also argued that the refusal of the application also was deficient because a refusal after a first objection was only admissible in cases where the applicant had not made serious efforts (“bona fide”) to deal with the first communication. However, in the present case, the response of the applicant dated April 25, 2007, was a “bona fide” attempt to overcome the objections of the ED. Therefore, the application could not have been refused without a further “warning” of the applicant. […]

[9.1] The Board notes that there are no doubts that the response of the applicant dated April 25, 2007 is serious.

However, the appellant is wrong when arguing, based on decision T 802/97, that this alone would have required a further communication. Such an obligation cannot be derived from A 94(3). How often the ED requests the application to comment lies within its discretion.

[9.2] According to the Guidelines for examination there should be a further written communication, a telephone discussion or a personal interview if there are good prospects of bringing the proceedings to a positive conclusion, in the form of a decision to grant (see Guidelines, April 2010 edition, C-VI 4.3, last paragraph).

[9.3] However, it should be noted in this context that the Guidelines for examination can only be considered to be general instructions intended to cover normal cases. The responsibility of applying of the Guidelines to concrete particular cases lies with the ED, which can deviate from the Guidelines in exceptional cases. In contrast to the EPC and its implementing regulations, the Guidelines do not form legal provisions (cf. Guidelines, April 2010 edition, general part, 3.3.2).

[9.4] When examining decisions of the ED the Board of appeal does not assess whether the ED has acted according to the Guidelines but whether the limits fixed by the EPC and its implementing regulations have been respected when the ED exercised its discretion. It is not the function of a Board of Appeal to review all the facts and circumstances of the case as if it were in the place of the first instance department, in order to decide whether or not it would have exercised such discretion in the same way as the first instance department (cf. G 7/93 [2.6]). Therefore, the Board only overrides the way in which the ED has exercised its discretion if it comes to the conclusion that the ED has gone beyond its margin of discretion.

[9.5] The Board is of the opinion that the ED has acted within its margin of discretion when deciding that in the present case no further communication under R 94(3) was required after the first communication. In this respect, there was no procedural violation.

[9.6] Nor did the ED have the duty to arrange oral proceedings (OPs). There was no such request on behalf of the applicant. The ED should only have organised OPs of its own motion if it considered this to be expedient (A 116(1)). However, manifestly the ED did not consider OPs to be expedient.

[9.7] The Board does not see this to constitute a deficient exercise of discretion. It is not expedient to have OPs when the applicant expresses that it considers a particular objection to have been overcome but does not provide any arguments as to why it holds this conviction. The applicant’s response to the first communication, dated April 25, 2008, did not contain such reasons although it was the applicant who bore the burden of proof.

[10] Nor was the Examiner in charge required to have a telephone interview or any other form of personal consultation, in order to tell the applicant that the objection under R 43(2) is maintained for the claims as amended. […]

[10.1] The Board does not agree with the opinion of the appellant according to which it would have been obvious for the Examiner that a telephone interview might have made the appeal proceedings unnecessary.

[10.2] The appellant submits that on the basis of the submission of April 25, 2008, the ED had to assume that the applicant would not maintain one of the independent claims 1 or 18 rather than have the patent application refused, or that it would file a divisional application, as the case might be. The Board is of the opinion that the ED would only have had to take this into consideration if the appellant had not expressly written “the applicant might come back to the original claims to a later stage”, or if the appellant had expressly acknowledged that the objection under point 1.1 of the written opinion on the European search dated November 13, 2006, was justified.

[10.3] Admittedly it lies within the dutiful discretion of the Examiner to decide on whether in a particular case there should be an informal consultation or not. Therefore, the Board does not see any hint that the Examiner, when considering the statement of the applicant, has gone beyond his margin of discretion when deciding not to have a telephone interview.

[11] It follows from all this that the impugned decision is not based on one or several substantial procedural violations.

[12] Therefore, the requirements for reimbursement of the appeal fee pursuant to R 103(1)(a) are not fulfilled. […]

The request for reimbursement of the appeal fee is dismissed.

Once again, so much trouble and effort could have been avoided had the applicant filed a precautionary request for OPs together with its response to the A 94(3) communication.

To download the whole decision (in German), click here.

The file wrapper can be found here.