Wednesday, 28 March 2012

T 1880/11 – Untimely

The application under consideration was refused a first time by the Examining Division (ED) with a decision posted on October 4, 2005.

The applicant filed an appeal; on July 24, 2009, Board 3.5.05 set the decision aside and remitted the case to the first instance “with the order to grant a patent on the basis of the main request ... and a description and figures to be adapted thereto” (T 408/06).

The ED issued a communication under R 71(3) on January 12, 2010. In the attached documents, pages 9, 9a and 9b of the description were amended by the ED in order to adapt the description as required by the Board. In particular, the following sentence was added on page 9b:
“The embodiments of figures 2, 3 and 5 do not specify the invention but only related technology.”
In a first letter dated May 20, 2010, the grant documents were said to be approved, but with a request to amend the added sentence to:
“The embodiment of figure 5 does not specify the invention but only related technology.”
In a communication dated September 10, 2010, the ED raised an objection under A 84.

In a second letter dated January 20, 2011, the applicant requested a new communication under R 71(3) wherein the sentence on page 9b should be deleted and the other amendments on pages 9, 9a and 9b maintained. There was also a conditional request for oral proceedings (OPs).

The application was refused a second time by the ED with a decision posted on March 30, 2011. The reason for the refusal was lack of clarity.

The applicant filed an appeal against this decision. It submitted a notice of appeal, together with “abbreviated Grounds of Appeal”:
“Thus, to enable immediate allowance under interlocutory review, the Applicant hereby approves the amendments proposed by the Examiner on pages 9, 9a, and 9b as attached to the Communication under R 71(3) dated 12th January 2010.”
A second statement of the grounds was received on July 14, 2011, repeating the approval and the requests, and a third statement of the grounds on 9 August 2011. Inter alia it was argued that there had been a procedural violation.

The Board found that the ED had committed a substantial procedural violation.

[2.1] In his third grounds of appeal dated 9 August 2011, the appellant submitted that there had been a procedural violation. He complained that the dialogue with the ED about the adaptation of the description had been improperly stopped by the issuing of a refusal decision.

The appellant further argued that the ED had itself interpreted the ratio decidendi of the board of appeal’s decision and had not permitted any discussion on its interpretation […].

The letter ends with the assertion that “not permitting any further written submissions by the applicant” constituted a “procedural violation”.

[2.2] In its communication dated 10 September 2010, the ED argued that the amendments of the ED were “a direct and unavoidable consequence of what has been ordered by the BoA (decision T 480/06, chapter 8)” […].

[2.3] The appealed decision (section 7) argues that:
“the description ... contains subject-matter that does not fall within the scope of the claims since the decision T 408/06, chapter 8 explicitly identifies such subject-matter being not covered by the claims.”
[2.4] The passage in the board of appeal’s decision cited by the ED reads (T 408/06 [8]):

[8] The board concludes that the claims of the main request satisfy the requirements of the EPC. However, the claims of the said request are understood to relate primarily to the embodiment according to Fig. 4 and the related passages of the description. The description includes further embodiments which are not covered by said claims. For example, the embodiments of Figs. 2 and 3 are understood to relate to a client-side “digital content management apparatus” which is used for the secrecy protection of the digital content, (cf. col.5 1.38-47).”
It follows from this passage that figures 2 and 3 are understood to relate to embodiments which are not covered by the claims of the main request.

[2.5] At the time when the ED had to decide on the request for OPs, the following arguments had been presented by the applicant:
“It appears that with the other amendments made on page 9a and 9b, the application is now clearly adapted to the claims and the statement which was hand-written by the Examiner and amended by the representative seems redundant. There is no specific requirement in the Decision for an explicit positive or negative statement, merely for adaptation of the description. There is a conceivable risk that the negative statement may be adversely construed, however improper that might be, which is why we feel it unhelpful as well as unnecessary.” […]
[2.6] In order to decide whether the ED committed a procedural violation, the board has to consider whether the ED had the discretion to reject the request for OPs.

[2.7] A 116(1) EPC 1973 reads:
“OPs shall take place ... at the request of any party to the proceedings. However, the EPO may reject a request for further OPs before the same department where the parties and the subject of the proceedings are the same.”
The only other provision of the EPC allowing rejection of a request for OPs applies only to the Receiving Section (A 116(2) EPC 1973). Thus the EPC defines only one situation which allows the ED to reject a request for OPs: the request is for further OPs (which applies here; the first OPs before the ED took place on 8 July 2005); it must be before the same department (applies here); the parties must be the same (applies here) and the subject of the proceedings is the same. The last condition does not apply here since the claims are different and there is a new subject, namely how to adapt the description and the figures in order to fulfil the order of the board of appeal’s decision.

[2.8] As to the statement in the appealed decision, section 7:
“The auxiliary request for OPs is not allowed since a point to be discussed is prerequisite for the summons to OPs and the applicant is not entitled to continue discussing issues on which the division has no right to decide. In the present case in view of A 111(2) the ED is not entitled to discuss the ratio decidendi of the Boards of Appeal decision T 408/06.”
Firstly, as follows from the above there is no basis for this to be found in the EPC, in particular not in A 116(1) EPC 1973.

[2.9] Secondly there was in fact clearly a need for and an entitlement to discussion between the ED and the applicant in this case. At least the following questions could have been discussed during OPs:
  • Does the above cited section [8] of the board of appeal’s decision belong to the ratio decidendi of the decision?
  • Does section [8] leave room for interpretation since the wordings “primarily” and “understood” are used?
  • Did the ED interpret the ratio decidendi of the board of appeal’s decision or did it strictly follow the ratio decidendi?
  • Does section [8] force the addition of the sentence “The embodiments of figures 2, 3 and 5 do not specify the invention but only related technology.” to the description?
[2.10] Moreover the outcome of the OPs could clearly have had a decisive influence on the outcome of the examination procedure as a whole. Thus, the rejection of the request for OPs by the ED constitutes a substantial procedural violation.

[2.11] The appellant did not request the reimbursement of the appeal fee. The board could grant the reimbursement even without such a request. According to R 103(1)(a) the prerequisites for reimbursement are the allowability of the appeal, equity and a substantial procedural violation. While the first and last of these conditions are satisfied in the present case, the fact that the appellant now does not request more than was in fact offered in the R 71(3) communication and so could have been achieved even without the (refused) OPs, means that reimbursement would not be equitable.

The appropriate order

[3.1] The board could only guess at the ED’s reasons for not granting interlocutory revision as requested, since, in accordance with A 109(2) EPC 1973, it passed the appeal to the board without comment. The board refrains from making any such guess. Prima facie the ED should have granted interlocutory revision, since the applicant now accepted the text which had been proposed to it. However the board notes that an ED is not bound, even by an applicant’s approval of a text put forward by the division to grant a patent on that text (G 7/93, [2.1, penultimate paragraph]). Given that the dialogue between division and applicant was brought to a premature end by the untimely issuance of a refusal decision without holding the OPs requested, the board therefore uses its discretion under A 111(1) EPC 1973 and remits the case to the department of first instance for further prosecution (bearing in mind that the final form of the claims has already been decided).

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

The file wrapper can be found here.

Great minds think alike; Laurent Teyssèdre has commented this decision on the very same day (here).