T 317/11 – Inquisitor Me Impune Lacessit

This is an appeal against the refusal of an application by the Examining Division (ED).

Together with the statement of grounds as filed on August 6, 2010, a set of amended claims was filed.

On January 31, 2011, the ED instructed the formalities officer that it would not rectify the decision under appeal and that the case should be referred to the board of appeal.

[1.1] The decision to refuse was preceded by a communication of the ED issued on 6 May 2009 in which inter alia objections of added subject-matter (A 123(2) […]) against claim 2 and of lack of inventive step (A 56 EPC […]) against claim 1 were raised. [… T]he ED further argued that

“The expression […] “man or machine” discloses two alternatives. The lack of inventive step described above concerns the alternative where the B-replier is a man. But the lack of inventive step of one of both alternatives results in lack of inventive step of the claim 1”.

In the same communication the ED proposed an amended claim 1 which in its view would overcome the objections on file […]. From this proposal it is clear that the ED considered the claimed method as involving an inventive step if the authorized party was “a machine called B-replier” whereas it considered the method as lacking an inventive step if the method encompassed the possibility that the authorized party was a “man called B-replier”.

[1.2] A new set of claims was filed on 8 August 2009. The ED then refused the application, taking the view that the objections raised in the communication were not met by the amended claims.

[1.3] Claim 1 as filed together with the statement of grounds corresponds to the claim which the ED stated in its communication of 6 May 2009 would overcome the objections it had raised. In the reasons of the impugned decision […] the ED explicitly described the proposed claim as “patentable subject-matter”.

Furthermore, claims 2 and 12, said by the ED to contain added subject-matter, have been deleted from the present set of claims.

Hence, the objections which led to refusal of the application have been overcome by amendment. Consequently, the appeal is well founded.

[1.4] According to the established case law of the boards of appeal (see e.g. T 139/87; T 2140/09) the case ought therefore to have been rectified by the department of first instance pursuant to A 109(1). The ED did not however grant interlocutory revision, the reason for the apparent change of mind of the ED remaining unclear to the board. Under these circumstances the board considers that the case should be remitted to the ED for further prosecution in accordance with A 111(1).

The request for reimbursement of the appeal fee

[2.1] Pursuant to R 103(1)(a) the appeal fee shall be reimbursed in the event of interlocutory revision or where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation.

[2.2] The board infers from the statement of grounds of appeal […] that by refusing the application at this stage of the procedure the appellant (applicant) was taken by surprise so that the refusal constituted a substantial procedural violation.

[2.3] The grounds for refusal as given in the reasons of the impugned decision substantially correspond to the objections as discussed above […].

[2.4] It follows that the decision to refuse the application was based solely on grounds communicated to the applicant in the ED’s communication and on which the applicant had an opportunity to comment (A 113(1)). Whether or not in the present case a further communication should have been issued by the ED instead of an immediate refusal was a matter for the discretion of the ED. Accordingly, the grounds for refusal do not give rise to a procedural violation.

[2.5] Furthermore no sanction is provided in the EPC in the event of failure to forward the case to the board of appeal within the three month time limit as required by A 109(2); therefore the fact that the ED had delayed the remittal of the appeal to the board of appeal by more than five months from receipt of the statement of grounds in contravention of A 109(2) entails no legal consequence.

[2.6] Even if this delay may be considered a procedural violation there is no causal link between the reasons of the impugned decision and this deficiency. Accordingly this procedural violation is not “substantial” in the sense of R 103(2).

[2.7] It follows from all these reasons above, that the board sees no substantial procedural violation in view of which reimbursement would be equitable.

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

The file wrapper can be found here.