Thursday, 14 June 2012

T 1326/11 – No Consent

The present case is not particularly surprising but I found it interesting because the Board scrutinized the way in which the Examining Division (ED) exercised its discretion under R 137(3) not to admit amendments.

There had been oral proceedings (OPs) before the ED on September 29, 2009. At the end of the OPs the ED announced its intention to grant a patent. A communication pursuant to R 71(3) had then been sent. The applicant then sent amended claims, which triggered the ED to send a communication pursuant to A 94(3) wherein it refused its consent to the amendments under R 137(3). Following a request by the applicant, the ED summoned again to OPs on December 20, 2010 “to discuss the admissibility of the amendments … under R 137(3) only”. During these OPs the application was then refused.

In its decision the ED explained that the applicant had already had sufficient opportunity to amend its case and sufficient time to prepare for the OPs. At the end of said OPs, the ED had announced that it intended to grant a patent on the basis of the sole request then on file. The set of claims received  after the R 71(3) communication omitted a feature which had been added in order to overcome objections under A 83 and A 54; the amendments proposed were, hence, substantive amendments which called into question the outcome of the earlier procedure. The conditions for accepting late amendments defined in the decision G 7/93 were, therefore, not met.

The appellant argued that the ED was not precluded from reopening examination proceedings up to the moment at which the decision was handed over to the internal postal service, and cited the Guidelines for Examination in the EPO, C-VI, 14.4. It argued that the discretion of the ED should be exercised taking into consideration all relevant factors, including the right of the applicant to a patent with the broadest possible scope. The application related to a complex invention, which justified an exception. Since the applicant could not file further divisional applications, these broader claims filed after the communication under R 71(3) were its sole possibility to obtain the scope of protection commensurate to the invention.

The Board followed the logic of the ED:

[2] The decision under appeal deals solely with the refusal under R 137(3) of the ED to admit into the proceedings the request received after issuance of the communication under R 71(3). Thus, the question to be decided on this appeal is whether this refusal is an appropriate exercise of the discretion given to the ED under R 137(3).

[3] Guidance on the principles to be applied can be derived from the Enlarged Board of Appeal decision G 7/93, as summarised in decision T 1064/04:

(a) Until the issue of a decision to grant the patent, the ED has a discretion under Rule 137(3) EPC whether or not to allow the amendment of the application at a late stage (G 7/93 [2.1]).

(b) The ED is required to exercise its discretion considering all relevant factors, in particular the applicant’s interest in obtaining a patent which is valid in all designated states, and the EPO’s interest in bringing examination to a close, and must balance these against one another (G 7/93 [2.2-3]).

(c) Allowing a request for amendment at a late stage of the examination proceedings during which the applicant has already had at least one opportunity to amend the application, and after the ED has already completed substantive examination thereof, will be an exception and not the rule (G 7/93 [2.3]).

(d) It is not the function of a board of appeal to review all the facts of the case as if it were in the place of the first instance department in order to decide whether or not it would have exercised the discretion in the same way. Rather, a board of appeal should only overrule a first instance exercise of discretion if it comes to the conclusion either that the first instance department has not exercised its discretion correctly as set out in (b) above, or has exercised its discretion in an unreasonable way, and thus exceeded the proper limits of its discretion (G 7/93 [2.6]).

[4] In the present case, the proceedings before the ED involved two communications according to A 94(3), after each of which the applicant filed amended claims, a detailed summons to attend OPs, in response to which new claims were presented to the ED, and OPs before it, during which two sets of amended claims had been filed. At the end of the OPs which took place on 29 September 2009, the ED intended to grant a patent on the basis of claims 1-12 of the sole request then pending and an adapted description thereof. This was confirmed in a communication under R 71(3) dated 23 November 2009. From this sequence of events, the board concludes that the applicant had several opportunities to amend the application and it did so, and that the substantive examination had been completed by the ED.

[5] The purpose of OPs should be to settle as far as possible all outstanding questions relevant to the decision. A late stage of the examination proceedings had thus been reached at the end of the OPs held on 29 September 2009, and any amendments thereafter fell to be considered under the principles derivable from decision G 7/93 as set out in point [3], above.

[6] As stated in the decision under appeal, the ED exercised its discretion under R 137(3) to refuse to allow into the proceedings the set of claims filed after the communication under R 71(3) because this would have required re-opening of the examination proceedings in relation to matters already thoroughly discussed during these proceedings.

The ED explained in its decision that the claims which the appellant sought to introduce in the proceedings omitted one feature which had been added previously to the claims in order to overcome objections under A 83 and A 54. The board agrees with the ED that the amendments proposed are substantive, in the sense that they call into question the outcome of the OPs and, if taken into account, would have necessitated a substantive re-examination of the application and thus a delay in the closure of the examination procedure.

In addition, the validity of the claims upon which the ED intended to grant a patent as mentioned in the communication under R 71(3) has never been put into question by the appellant.

Thus, the ED took into consideration the applicant’s interest in obtaining a valid patent and the EPO’s interest in bringing the examination to a close. The board concludes that the ED has, hence, followed the principles set in G 7/93 as explained in paragraph (b) above, and considered all relevant factors as defined in G 7/93 in its decision not to admit the new request.

[7] The board concludes, therefore, that the ED has exercised its discretion under R 137(3) in a reasonable manner by not admitting the set of claims filed under cover of a letter dated 11 March 2010 into the proceedings.

[8] The appellant has argued that the present application was very complex, not only due to its subject-matter, but also since it was a divisional of a divisional application (EP-03076151 and EP-96306263), and because the ED introduced with the summons to the first OPs 32 additional documents which had been cited in the opposition proceedings concerning the parent application. The scope of protection conferred by the claims proposed for grant would have been too narrow, and subsequent divisional applications could not be filed. For these reasons the present case was an exceptional situation in which reopening of the examination proceedings by the ED was justified.

[9] The board is of the view that the complexity of the case only supports the decision of the ED not to admit a request at a very late stage of proceedings, which had already involved two communications of the ED and OPs before it. In fact, admitting the set of claims put before it at that late stage would have led, in the view of the complexity of the case, to re-starting the examination on complex substantive issues, with the consequence of unduly lengthening the proceedings. […]

The appeal is dismissed.

I have been wondering whether the ED would have had to act differently if the new R 71 had applied. Having considered the Notice dated December 13, 2011 concerning amended R 71 and new R 71a (OJ EPO 2012, 52) and the draft Guidelines, C-V 4, I tend to believe that the way in which the ED acted here is blameless, even under the new regime. There may be some discussion, however, on what exactly is meant by “resume the examination proceedings” in R 71(6). Would the issuing of the A 94(3) communication (stating that the amendments were refused under R 137(3)) and the holding of OPs (for discussion of the admissibility of the amendments) qualify as “resumption of the examination proceedings”? If any reader can shed some light on this matter, please do so.

To download the whole decision, click here.

The file wrapper can be found here.


Roufousse T. Fairfly said...

I have been wondering whether the ED would have had to act differently if the new R 71 had applied.

So do I.

When I was still an examiner resuming examination was an unpleasant exercise, even if there could have been valid grounds. The reason was rather mundane: the examination division is de-allocated in the computer system once the communication according to Rule 71(3) went out. In normal cases this does not cause any problems, as this would be the last time the division looks at the file, as all later procedural steps are accomplished by formalities officers.

Howeer, should the applicant require amendments it gets complicated. The FO sends the applicant's proposed amendments back to the examiner together with a standard form for recording the division's decision on them. If they are approved, end of story, the Druckexemplar and form 2035 (IIRC) are manually updated.

If the changes are objected to, then the examiner must send a communication. The problem arises that the standard work flow is disrupted, as the automatic handling is no longer available. The examiner's computer tool wouldn't allow you to upload a communication, since (in the system's view) there is no longer a division in charge. The communication (form 2906) must therefore be printed out locally, sent for scanning, and issued with a form 2001 completed by the examiner's clerk.

The reason for the behaviour is undoubtedly that bl**dy production accounting. The cutover is (in most, but not all cases) the point the examiner sends out the R. 71(3) comm. At the end of the month, and especially at the end of the year an effort is made to make sure all files which are coded are sent out and accounted for. Clerks and directors go up and down the hallway with lists of files identified as being sent, in order to make the principal director happy, who will make the VP happy, who will make the president happy, who will make the MAC and the council happy. Sigh. So ist das Leben. Since the examiner has received his final point, there is no reason in the system's logic to reallocate a division, since no further point can or will be "paid out".

A case remitted by the board on the other hand with an instruction for resuming examination triggers the coding of a new division.

Anonymous said...

I think the latest tools used by examiners are rather different. I think the examining division is allocated forever, as far as the computer system is concerned.

Manoilis said...

The new rules 71 and 71a bring only one real change: when the applicants file amendments after the 71(3) communication there must be a new 71(3) communication sent when the ED agrees with the amendments. Under the previous version of the rule, there was only a form filled in and signed and no communication sent.
I don't see how this would affect the decision of an ED to re-open examination or not.

Re-opening examination, is quite a formal definition: sending a communication under Art. 94 after a 71(3) comm. brings back the file to examination procedure. In the case you comment, the examination was formally re-opened since there was a communication and oral proceedings, even if no substantive discussion took place.

Finally, I don't know when the first commentator left the EPO but what (s)he describes is not valid any more. The file stays allocated to the examining division until the decision to grant, i.e. the end of the procedure.