Friday, 20 May 2011

T 2193/10 – The Other Side

The applicant filed an appeal against the decision of the Examining Division (ED) refusing its patent application.

In a first communication (June 23, 2006) the Examiner made a novelty objection based on D1. This objection was upheld in a second communication (March 31, 2008) and in the document annexed to the summons to oral proceedings (OPs; scheduled for June 17, 2010). The applicant filed new claims one day before the OPs. On the very same day, there was a telephone discussion during which the request for OPs was withdrawn and the applicant’s representative announced that he would not attend the OPs. The OPs were maintained. The ED found the claims on file not to comply with A 123 and refused the application.

The Board considered this objection to be ill-founded. It then raised (of its own motion) the question of whether the applicant’s right to be heard has been violated:

[3] The Guidelines for Examination E-III, 8.3 deals with the situation in which a party who has been duly summoned to OPs does not appear at OPs.

The penultimate paragraph of this Section (April 2010) reads:
“An absent party cannot be considered taken by surprise if during OPs the other side attempts to overcome objections raised before the OPs. In particular, a submission during OPs of a more restricted and/or formally amended set of claims with a view to overcoming the objections of the opponent is not considered a ‘new fact’ (…). Nor is it unexpected that amended claims are examined for formal admissibility and for compliance with A 123(2) and (3) (see T 341/92).”
The ED cited the above paragraph in point 3 of the decision under appeal. It considered the applicant-appellant as the “absent party” and the ED as the “other side”. However, it is clear that the “absent party” and the “other side” in the cited paragraph stand for the absent opponent and the patent proprietor, respectively. That the above paragraph pertains to inter partes OPs is also clear from the discussion in the two preceding paragraphs of the decision G 4/92, which only relates to inter partes OPs, see point [1] of the Reasons.

The last sentence of the cited paragraph refers to the situation in which a patent proprietor has filed amended claims prior to OPs, which it does not attend. In the inter partes case underlying decision T 341/92 the patent proprietor had deleted a feature in an independent claim. The Board stated that
“According to established board practice, ..., amended claims are checked by the board of its own motion during the opposition appeal proceedings for formal admissibility and, in particular, the possibility of an infringement of A 123(2) and (3). There is an obvious need to check for this latter possibility if the patent proprietor deletes a feature in an independent claim. … It was therefore to be expected that a comparison of the amended claims with those of the granted patent for the purposes of A 123(3) would form part of the discussions at the OPs, …”.
In the judgment of the Board, it is questionable whether, in an ex parte case, the possibility of an infringement of A 123(2) must in general be expected by an applicant who filed amended claims prior to OPs and simultaneously announces that it will not attend the OPs.

Since the appellant did not claim that its right to be heard with respect to A 123(2) had been violated, and did not even mention the A 123(2) issue in its statement setting out the grounds of appeal, the Board refrains from investigating whether the requirements of A 113(1) are met, taking into account that a remittal without examining the novelty objection (formulated as an obiter dictum in the decision under appeal) would likely lead to a second refusal.

The Board then found the claims to be novel and remitted the case to the ED for further prosecution.

To read the whole decision, click here. The file wrapper can be found here.


Myshkin said...

I suppose this Board will also be of the view that the new claims filed ONE DAY before the OP and the corresponding "unexpected" Art. 123(2)-objection change the subject of the proceedings, so that the applicant not only can force the ED to continue in writing, but also has the right to new oral proceedings?

Maybe it is time for the Boards to take a step back and realise that in respect of the right to be heard they are imposing completely different standards to first instance proceedings and appeal proceedings. It is nonsensical that this standard should be higher in administrative proceedings than in judicial proceedings. I don't think there is any national legal system where this is the case.

Obviously the reference of the ED to the paragraph from E-III, 8.3 is unfortunate, but was this Board honestly not aware of decisions such as T 1704/06, points 7.5 and 7.6, T 1867/07, points 3.1-3.5 and T 532/09, points 1.2-1.5, to name just a few?

The Board's decision on admissibility is also puzzling. In the statement of grounds the applicant did not address at all the objection under Art. 123(2), which was one of the grounds for refusal. In the view of the Board, it was sufficient to address novelty because "the admissibility of an appeal can only be assessed as a whole". Indeed, that's why the Board should have declared the whole appeal inadmissible.

Myshkin said...

Correction: the Art. 123(2)-objection was the ONLY ground for refusal. When appealing, the applicant neither amended the claims, nor cared to explain why the ED was wrong to refuse on Art. 123(2). The Board finding this appeal admissible goes against a whole body of case law.

Not very judicial.

pat-agoni-a said...

What worries me more than a board finding an appeal on a wrongly refused application admissible (although I agree with Myshkin that the present case could be seen as inadmissible), is an examination division that considers themselves a "party".

An examining division has to be impartial and evaluate all the evidence at their disposal, whether it speaks against or for granting a patent (there was recently a physics board that did exactly this, introduce evidence speaking for the invention). The ED can never be a party to the proceedings, since a party has its own interests, in this case the not granting of a patent. The ED is bound by A 114(1) to examine the facts of its own motion.

Probably the ED did not see themselves in this sense, but the unfortunate quote from the Guidelines shows a lack of understanding on the different roles of the parties and the EPO.

In any case, I cannot subscribe the statement of the board that "it is questionable whether, in an ex parte case, the possibility of an infringement of A 123(2) must in general be expected by an applicant who filed amended claims prior to OPs and simultaneously announces that it will not attend the OP". I believe that the only article of the EPC dealing with amendments is A 123 and thus that it has to be expected that any amendment has to pass its hurdles before anything else.

Anonymous said...

This is indeed a weird one - the board seems to have gone seriously wrong on both of the counts mentioned by Myshkin. On any reasonable approach the appeal is inadmissible, the grounds for the refusal were simply not dealt with. Then the board makes some mealy-mouthed comments implying there has been a procedural error, without actually going so far as to establish this (so why bother?), ignoring the fact that the boards themselves act as the ED did all the time!