Friday, 10 August 2012

T 1990/08 – Double Trigger

The applicant filed an appeal against the refusal of its application by the Examining Division (ED). The ED considered that the requests on file did not comply with A 123(2), A 84 and A 56. The inventive step objection was based on documents D1 (a Japanese application) and D4 (a French application).

The Board found the request before it to be allowable and then dealt with the request for reimbursement of the appeal fee:

[7.1] The appellant argued that the ED committed a substantial procedural violation by not providing a translation of document D1, which justified the reimbursement of the appeal fee. […]

[7.3] According to R 67, first sentence, EPC 1973 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.

The board however finds that, even if the alleged procedural violation occurred in first-instance proceedings, it would not have been equitable to reimburse the appeal fee in the present case for the following reasons:

In the contested decision the ED relied on document D1 to deny inventive step of the subject-matter of claim 1 of the main request then on file […]. However, the contested decision is also based on other reasons for refusing the main request then on file and contains reasons […] why claim 1 of the main request was not clear (A 84 EPC 1973) and why the subject-matter of that claim extended beyond the application as filed (A 123(2) EPC). Thus, even if the inventive step objection including the appraisal of document D1 in the decision were disregarded, the contested decision would still be negative and be reasoned, and an appeal including payment of the appeal fee would have been required in order to obtain a reversal of the first-instance decision. Hence the alleged procedural violation could not have been the immediate and only cause of the need to appeal and to pay an appeal fee.

Moreover, if the board had found that the alleged procedural violation in relation to the ED’s finding on lack of inventive step had indeed occurred, such a violation would not have been considered by the board as fundamental, justifying a reversal of the decision under appeal and a remission of the case to the department of first instance.

Thus, regardless of whether a substantial procedural violation occurred or not, the appellant, requesting that a patent be granted, had to appeal in order to obtain a reversal of the first-instance decision. Under these circumstances, a reimbursement of the appeal fee would not have been equitable in the present case and, therefore, the question whether any procedural violation was in fact committed by the ED can be left open.

[7.4] In view of the above, the request for reimbursement of the appeal fee must be refused.

Still, it would have been nice to tell us whether, in the opinion of the Board, the fact that no translation had been provided as such could have constituted a substantial procedural violation or not.

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

The file wrapper can be found here.


pat-agoni-a said...
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pat-agoni-a said...
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pat-agoni-a said...

My guess is that the board would not consider the missing translation a procedural violation, although this may depend on the quality of the abstract. The abstract, if understandable, shifts the burden of proof to the applicant who has to show that the content of the document is indeed different from what the abstract suggests. Moreover, the abstract is a document in itself and if enabling and timely published may be state of the art on its own.

It thus depends on the facts of the case.

Anonymous said...

The chairman of the examining division is now a member of the board of appeal. This may explain why there was no opinion on the procedural violation...