Wednesday, 11 April 2012

T 840/07 – No Free Ride

The applicant filed an appeal against the decision of the Examining Division (ED) to refuse the application under consideration, for the sole reason that the claims lacked unity within the meaning of A 82.

The applicant argued that there had been a substantive procedural violation.

He argued that he had been adversely affected by the manner in which the examination proceedings had been conducted. Although the applicant made every effort to comply with each communication, the ED “went on throwing spanner [sic] in the works” so that the application had to fail.

After the applicant had dealt with the unsubstantiated objections against the breadth of the claims in the second communication, the ED took the applicant by surprise by summons to OPs with an annexed communication introducing for the first time document D2 as the justification for the OPs and another “reason” for rejection of the application. The applicant filed two new sets of claims with its letter of September 4, 2006, asked for the examination to be continued in writing and for a telephone discussion of any minor issues, but requested OPs in case the ED considered refusal of the application.

In the subsequent first telephone consultation on October 23, 2006, the applicant’s representative explained that the summons to attend OPs was premature and allowance should be made for the applicant’s limited resources. No reason was given why the requests filed on September 4, 2006, were bad. The primary examiner refused to cancel the OPs and to continue the proceedings in writing and gave the applicant until October 27, 2006, to file new sets of claims. The applicant’s representative filed an amended second auxiliary request on October 26, 2006, and a further telephone consultation took place on October 27, 2006, in which he was told that this request was inadmissible and he was given a last chance to file amended claims by 16:00 on that date.

The Board found the request before it to comply with A 82 and then dealt with the request for reimbursement of the appeal fee:

[12] The appellant’s complaints about the ED’s conduct of the examination proceedings are understandable but inconsistent. It is clear that the appellant wished to avoid the cost of attending OPs but none the less requested OPs if (as was the case) the ED considered refusing the application. The specific complaint of a substantial procedural violation by the introduction of document D2 into the proceedings with the summons to attend OPs cannot, in the board’s view, be correct. The ED is entitled to identify additional prior art and to raise objections based on it. Contrary to the appellant’s argument, it did have time to consider the new document - the summons was issued on 2 June 2006 and the applicant replied in writing on 4 September 2006.

[13] One aspect of the proceedings which the appellant does not specifically criticise but which troubles the board is the exceedingly short deadlines imposed by the ED in the telephone consultations for filing further requests before the OPs – on 23 October 2006 a deadline of 27 October 2006, and on 27 October 2006 a deadline of 16.00 hours the same day. It is notable that on both occasions the applicant met those deadlines but they were clearly both far too short to allow a representative to consult his client, take adequate instructions and draft and file new requests.

[14] The impression the objective reader obtains from reading the file of the examination proceedings is of mutual frustration. On one side the ED wanted to bring the proceedings to a conclusion and, after three rounds of communications and replies and two telephone consultations shortly before the OPs, both followed by further written submissions, it clearly considered the OPs necessary to provide that conclusion. On the other side, the applicant wanted to avoid OPs to save costs and, if necessary, would not attend OPs for costs reasons. If maintained, as they were, those attitudes were irreconcilable.

The appellant’s submission that the present appeal could have been avoided if the ED had allowed further discussion is wholly speculative. Moreover, and the deciding factor, the appellant’s request which has succeeded in this appeal is the same as the main request which it filed on 4 September 2006 and later replaced. It did not pursue that request to the point where it became the subject of a decision. Thus the appellant had no choice but to appeal if it wanted the result it has now obtained. To reimburse the appeal fee would give the appellant a fee-free appeal which would be inequitable. The request for reimbursement must accordingly be refused.

The Board then remitted the case to the ED.

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

The file wrapper can be found here.