Friday, 10 June 2011

T 1837/07 – Wiping The Slate Clean

The present appeal was filed after the Examining Division (ED) had refused an application because its subject-matter did not comply with the requirements of A 52(4), A 84, A 123(2), A 56 or A 56.

In two communications dated December 21, 2004 and April 3, 2006, the ED had held that independent claims 1 and 17 did not comply with A 84 and A 123(2).

In its response the applicant requested oral proceedings (OPs) to be held if the ED considered refusing the application.

On October 31, 2006, the ED summoned the applicant to OPs to be held on January 15, 2007. It was announced that objections under A 84 and A 123(2) against the main request and three auxiliary requests were to be discussed.

About one week before the OPs, the applicant informed the ED that it would not attend the OPs and filed another auxiliary request.

During the OPs (in the absence of the applicant) the ED confirmed several objections and raised new objections. It gave the applicant the opportunity to comment on the latter in writing.

The applicant filed a response on May 29, 2007 and requested a patent to be granted on the basis of the former main request or two new auxiliary requests. It also requested suspension of the proceedings in view of the then pending referral G 1/07 and OPs to be held in case the ED intended to refuse the application.

On June 2007 the ED issued the impugned decision refusing the application. In its decision the ED stated that it had not admitted the latest auxiliary requests.

The Board found that the decision was insufficiently reasoned, which amounted to a violation of R 68(2). The decision also contains some interesting paragraphs on the application of R 86(3) EPC 1973.

NB: It is true that the provisions which are applicable today are somewhat different (thanks to EPC 2000 and the Raising the Bar initiative), which means that the following paragraphs are of more historical interest. Nevertheless it is stimulating to compare the situation under the EPC 1973 with what we have today.

[3] Pursuant to R 86(3), first sentence, EPC 1973, after receipt of the first communication from the ED, the applicant may, of his own volition, amend once the description, claims and drawings provided that the amendment is filed at the same time as the reply to the communication.

Hence, under this provision, amendments have to be considered by the ED even if they are not specifically aimed at answering the objections raised in the first communication. A fortiori amendments aimed at answering such objections must be taken into account.

Pursuant to R 86(3), second sentence, EPC 1973, only further amendments require the consent of the ED.

It is recalled that under R 51(3) EPC 1973, any communication under A 96(2) EPC 1973 shall contain a reasoned statement covering, where appropriate, all the grounds against the grant of the European patent. This applies in particular for the first communication.

This means that if, for whatever reason, the ED chooses not to mention all the grounds in the first communication and mentions some of them only in a further communication, this communication is the first communication for these reasons according to R 86(3) EPC 1973 and the ED cannot refuse to consider an attempt to overcome these newly raised objections in the subsequent response of the applicant.

In the present case, apart from the objections under A 84 and A 123(2) EPC 1973 against claim 1 of the main request already raised earlier, the ED raised the objections under A 52(4) and A 56 EPC 1973 against this same claim for the first time in the minutes of the OPs, sent on 19 January 2007, and then as the next step refused to consider the first and second auxiliary requests filed with the answer to the minutes. As a matter of fact the first and second auxiliary requests were not introduced into the procedure because the ED had “warned” the appellant in the minutes of the OPs that “amendments which are not prima facie allowable may not be admitted into the proceedings pursuant to R 86(3)” and, as already mentioned above, the ED considered that the requests were clearly not allowable under A 52(4), A 84 and/or A 123(2) EPC 1973 and moreover were late filed.

However, in the opinion of the Board, at least the second auxiliary request must be considered as an attempt to overcome all objections raised by the ED against claim 1 of the main request:
  • the objections under A 84 and A 123(2) EPC 1973 because the original wording of the first part of claim 1 has been maintained, which part was never objected to under A 84 EPC 1973, and;
  • this originally filed wording can obviously not infringe A 123(2) EPC 1973;
  • the objection under A 56 EPC because additional features have been introduced into claim 1, and
  • the objection under A 52(4) EPC 1973 because a disclaimer has been introduced into claim 1.
For this reason the Board is of the opinion that the provision of R 86(3), second sentence, EPC 1973, is in fact not applicable to the second auxiliary request at all as the objections of lack of inventive step and exclusion from patentability under A 52(4) EPC 1973 against claim 1 of the main request were raised for the first time in the communication (i.e. the minutes of the oral proceedings) preceding the refusal to introduce the second auxiliary request into the proceedings.

These minutes of the ED have to be considered as the first communication within the meaning of R 86(3), first sentence, EPC 1973, with regard to these objections, and hence, claim 1 according to the second auxiliary request filed with letter of 29 May 2007 being an attempt to overcome the objections made in these minutes, there is no room to refuse these claims under R 86(3), second sentence, EPC 1973.

R 86(3) EPC 1973 thus has not been applied in a reasonable way in relation to the second auxiliary request, and this is an additional procedural violation.

In contrast to R 51(3) EPC 1973, which has remained unchanged as to its substance when becoming R 71(2)EPC 2000:

A 94(3) has undergone some change (as compared to A 96(2) EPC 1973):

and R 137(2) and (3) as in force today is quite different from R 86(2) and (3) EPC 1973:

If my understanding of the situation is correct, nowadays the applicant uses its single opportunity to amend without the consent of the ED when answering the notification under R 70a (or R 161 in case of a Euro-PCT). This means that the exact logic applied by the Board to the case above would not operate because R 137 as applicable today does not refer to a first communication any more.

Does this mean that the situation is completely different today? I guess not, because in case the ED raises new objections later on, under A 94(3), it will have to give the applicant the opportunity to amend the application so as to overcome the objections.

What then is the difference? My view of things (but I am open to correction) is that amendments the applicant makes “of his own volition” can be very profound, e.g. the applicant can switch from product claims to method claims, etc. (provided there is a basis in the application and there were no limitations of the search, that is). This makes sense when the amendments are made in response to the search report, and this possibility has remained unchanged with respect to the EPC 1973. Amendments made in response to communications under A 94(3) will as a rule have to stick to the objections made and profound changes as the one mentioned above might well be refused if they do not help to overcome the objections. Under the EPC 1973, the ED could not object to such amendments, whereas now it can.

So, if my view of things is correct, under R 86 EPC 1973, as understood by Board 3.2.02, the applicant could have profoundly modified its claims in response to the new objections of the ED without having to ask for the approval of the ED (because they constituted a new “first communication” within the meaning of R 86(3) EPC 1973), but the same is not true under R 137 as in force today.

This being said, even today the ED would have to admit auxiliary requests filed in response to a communication under A 94(3), if they constitute a serious attempt to overcome the objections, and not admitting such requests would still be a procedural violation.

Admittedly, most of this is somewhat bookish, and it may well be that your practice regarding amendments has hardly changed since we have been offered the EPC 2000 and Raising the Bar. Mine certainly has not (except for the fact that R 161 notifications have to be answered). It would be interesting to hear what things look like from the Examiner’s point of view. Has your practice with regard to amendments changed in any significant way? If so, how?

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


Anonymous said...

Guidelines C-VI, 4.7 is helpful on this, which includes the following.

"Amendments remedying a deficiency in response to the preceding communication must always be admitted, provided they do not give rise to some new deficiency. Amendments limiting a claim which is already considered allowable should normally be admitted. The same applies to amendments improving the clarity of the description or claims in a manner clearly desirable."

Myshkin said...

I agree with your analysis.

Regarding the "old" Rule 86(3) EPC 1973 and Rule 137(3) EPC 2000, I don't find the logic of the Board very convincing. It seems to me that "the first communication" in R. 86(3) is the same "the first communication" as in R. 86(2) and simply refers to "the first communication" (under Art. 96(2) EPC 1973). Surely an applicant cannot freely make amendments under R. 86(2) as long as certain objections have not yet been raised by the ED. (But of course an ED cannot arbitrarily withhold consent to later amendments.)

The Board even seems to be of the view that no consent of the ED is required for amendments that attempt to overcome any newly raised objections against claims on file, even if those objections did not apply to the original claims. That would mean that an applicant can effectively make an unlimited number of amendments, each amendment raising a new objection. I wonder if the Board is not confusing the right to be heard with the right to amend.

Another thing: even if the applicant after receipt of the minutes of the OP had one opportunity to amend under R. 86(3), first sentence, this opportunity was used when filing the first auxiliary request. The second auxiliary request therefore definitely required the consent of the Division.

Manolis said...

I don't think there has been any change from the examiner's point of view.
It is more the applicant who lost one chance to amend of his own volition. Before there was one chance after the Search Report and one after the first communication. On the other hand, nowadays with the ESOP the "first communication" is sent with the search report so that the applicant knows (ideally...) right away where the problems lie.
The examiner's current practice is reflected to the GL citation in the first comment and as fas as I know there has been no other guidance from the EPO to the examiners.
Having said that, R 137(3) (and 86(3)) has always been a delicate matter in its application, despite the abundance of case law and guidelines...