T 970/10 – Errare Inquisitorium Est

Sometimes Examiners err. Which does not mean that they necessarily commit a substantial procedural violation when doing so.

Inventive step

[1] The Examining Division (ED) based its reasoning on the disclosure of, inter alia, document D4. However, this document is dated September 2006 which is after the filing date of the present application (26 April 2006). Document D4 is consequently not prior art within the meaning of A 54(2) and hence not relevant to inventive step (A 56); nor is there any suggestion that D4 discloses subject-matter well-known to the skilled person at the filing date of the application. The objection of lack of inventive step was therefore, prima facie, ill-founded. As this was the ground leading to refusal of the application, the decision under appeal has to be set aside. […]

Reimbursement of the appeal fee

[4.1] An incorrect assessment of a document with regard to its date of availability to the public relates to a factual error in respect of the substantive requirements to be met by the “state of the art” in accordance with A 54(2) (which is included in Part II of the EPC, “Substantive Patent Law”), and not to an error in respect of procedural law. Such an error therefore does not amount to a substantial procedural violation.

[4.2] The appellant argued that the citing of documents which are not part of the state of the art under A 54(2) was a procedural violation, as it was contrary to the correct procedure for performing examination under A 94, or for drawing up a search report under R 61.

[4.3] However the board notes that the procedure followed by the ED apparently fully complied with A 94, or A 96 EPC 1973, in that the ED examined whether the European patent application met the requirements of the EPC, determined that the application or the invention to which it relates did not meet the requirements of the EPC, and invited the applicant to file his observations. One of the purposes of the procedure set out in A 94 is in fact to provide the applicant with the opportunity to point out exactly the kind of substantive error committed by the ED.

[4.4] With regard to R 61 (cf. R 44 EPC 1973), this concerns the content of the European search report. If the search report putatively contained an error of fact regarding a document’s date of availability to the public (although in the present case the content of the search report is not relevant as documents D4 and D5 were not mentioned in the European search report) this would also be a substantive rather than a procedural matter.

[4.5] In accordance with R 103(1)(a), “the appeal fee shall be reimbursed ... if such reimbursement is equitable by reason of a substantial procedural violation”. As there was no substantial procedural violation, this request is refused.

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

The file wrapper can be found here.

NB: A French summary can be found on Le blog du droit européen des brevets.