Tuesday, 3 July 2012

T 353/11 – Intentions Are Not Enough

One of the traps Examining Divisions (ED) sometimes fall into – in particular when taking decisions “on the state of the file” without oral proceedings (OPs) – is to insufficiently reason their decisions. This what happened in the present case and which led to a (second !) remittal.

[2.1] Pursuant to A 106(1) an appeal shall lie from the decisions of the ED. According to R 111(2) the decisions of the EPO open to appeal shall be reasoned.

[2.2] The function of appeal proceedings is to give a judicial decision upon the correctness of an earlier decision taken by a first instance department (see inter alia T 34/90 [headnote 1]). A reasoned decision issued by the first instance department meeting the requirements of Rule 111(2) EPC is accordingly a prerequisite for the examination of the appeal.

[2.3] It is established jurisprudence of the boards of appeal that for this requirement to be fulfilled the decision must include, in logical sequence, the supporting arguments. The grounds upon which a decision is based and all the relevant considerations in respect of the factual and legal aspects of the case must be discussed in detail in the decision (see inter alia T 278/00).

[2.4] In the present case the ED refused the application using EPO Form 2061 under the so-called “decision on the state of the file” procedure. This typically involves referring in, and/or annexing to Form 2061, one or more previous communications of the ED.

[2.4.1] This standard form may be entirely appropriate in the case where the ED has fully expressed and reasoned its objections to the current application text in the preceding communication(s). It should be noted that a request for a decision based on the current state of the file does not mean that the party gives up its right to a reasoned decision (see T 1356/05 [15]). It simply means that the party does not wish to further comment on the case.

[2.5] In the present case, the decision under appeal refers solely to the communication of 21 January 2010, which was annexed to a summons to attend OPs.

[2.5.1] Points 1 to 3 of said communication merely reproduce the wording of claim 1 on file, indicate that the subject-matter thereof was deemed novel by the decision T 1631/06, and that during oral proceedings inventive step would be examined.

[2.5.2] Point 4 of said communication begins with the wording “The preliminary opinion of the ED is the following”. It then identifies the closest prior art, namely document D1, and describes what is disclosed therein and how the subject-matter of claim 1 of the application in suit is distinguished therefrom, namely by the feature identified in point II above. It was then indicated that “it will be examined whether this feature involves an inventive step or not”. It was further indicated that it was not clear whether the examples of the application illustrated the distinguishing feature of the invention and invited the Applicant to submit such an example. It indicated that it would then be examined whether the defined controlling of the pH value involved any surprising effect vis-à-vis Example 1 of document D1. The Applicant was thus invited to compare the effects of the claimed process with that of Example 1 of document D1, said comparison being carried out under the same experimental conditions, i.e. the experiments should differ only by virtue of the distinguishing feature and the significance of any effects should be explained.

[2.6] The communication thus does no more than to identify the closest prior and the distinguishing feature of the invention, indicates that it is “not clear” whether the examples of the application illustrate the distinguishing feature of the invention, states it will be examined whether or not the process is inventive, and invites the [applicant] to file a comparative example. It neither gives an explicit conclusion with respect to inventive step, nor any reasons as to why the claimed process is not inventive. More particularly, it provides no reasons as to why it may have been obvious to the skilled person to amend the process according to document D1 by controlling the pH of the formulation prior to injection in relation to the pH and temperature prevalent or created in the rock formation, such that upon injection into the rock formation the pH of the formulation varies to a value so as to generate a precipitate of the scale inhibitor in situ, i.e. as to why in the absence of a comparative example, the claimed process lacks an inventive step. Furthermore, no reasons are given as to why the examples of the application do not appear to illustrate the distinguishing feature of the invention, and thus nor as to why they do not provide a fair comparison with document D1.

[2.7] Accordingly this communication cannot be regarded as containing any reasons at all for refusing the application, and also does not arrive at any conclusion with regard to inventive step.

[2.8] It might be that the ED had the intention to give more detailed reasons to the applicant during the OPs but, the OPs not having taken place, a simple reference in the decision to vague and incomplete statements in a prior communication cannot be considered as valid reasoning pursuant to R 111(2).

[2.9] Thus, the ED did not issue a reasoned decision within the meaning of R 111(2) and, therefore, committed a substantial procedural violation.

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

The file wrapper can be found here.