Wednesday, 19 September 2012

T 1518/12 – Serves You Right

The appeal was filed against the refusal of the application under consideration (claiming a process for preparing acyclic HCV protease inhibitors) for lack of inventive step.

In a first communication under A 94(3) the Examining Division (ED)  had expressed the opinion that the requirements of A 83 and A 84 were not met and that the claimed subject-matter lacked an inventive step. The communication stated that the application described a synthetic route for the preparation of certain compounds in general terms but did not give any example substantiating the success or feasibility of that route, and concluded that there was no substantiation that the technical problem had been solved.

The applicant replied by filing claims amended in response to the objections under A 83 and A 84. As regards the objection of lack of specific examples to substantiate the feasibility of the claimed process, it referred to tables 1 and 2 of the application as filed which lists 55 compounds that may be prepared by the claimed process.

The ED then refused the application. In its decision it reiterated the inventive step objection. It referred to the appellant’s argument based on tables 1 and 2 of the application as filed but, since it considered that those pages did not provide sufficiently specific information, maintained its view that the applicant had neither substantiated nor provided convincing arguments that the claimed process in fact solved the problem underlying the application.

In its notice of appeal, the applicant pointed to examples 4, 5 and 6 of the first priority document as descriptions of different possible routes of the claimed process. The appellant argued that these examples, which were present on the file, substantiated the solution of the problem underlying the present invention.

The ED granted interlocutory revision, but referred the request for reimbursement of the appeal fee to the Board.

[1] The ED has allowed the appeal which has been forwarded to the Board solely to decide on the appellant’s request for reimbursement of the appeal fee. That has been done pursuant to R 103(2) EPC (see also J 32/95 and G 3/03).

2. The provision which the Board must consider is R 103(1)(a) which, as relevant for the present case, reads:
“(1) The appeal fee shall be reimbursed

(a) in the event of interlocutory revision …, if such reimbursement is equitable by reason of a substantial procedural violation …”
There are thus three conditions to be satisfied – interlocutory revision must have been allowed, a substantial procedural violation must have occurred, and reimbursement because of that violation must be equitable. Interlocutory revision having been allowed, the Board is concerned only with the second and third conditions. Clearly, the second condition must be satisfied before the third condition needs to be considered.

[3] The Board notes that the appellant does not allege a substantial procedural violation as such but only argues that the appeal fee should be reimbursed because the information put forward in its grounds of appeal - namely, the examples in the first priority document - was evident from the file.

[4] While that information certainly was on file, and while the ED would no doubt have ascertained that information if it had, at the time of making its decision, had occasion to re-read the priority document, the Board cannot accept that not taking that step amounted to a substantial procedural violation. The mere presence of information somewhere in the file does not relieve a party of its duty to draw attention to it when necessary or to present arguments relying on such information at the appropriate time (see R 2/08 [8.5,9.10]). That did not happen in the present case.

[5] When the ED in its communication of 4 September 2009 expressed its view as to the absence of any substantiation that the technical problem had been solved […], the appellant did not refer in its reply of 12 April 2010 to the examples in the first priority document which it later mentioned for the first time in its grounds of appeal. That response to the communication would however have been the appropriate time to have done so since, as the allowance of interlocutory revision clearly suggests, it might have resulted in a decision in the appellant’s favour and avoided the need for an appeal. Instead the appellant presented an argument based on the tables at pages 43 to 49 of the application as filed which the ED did not find convincing.

[6] It is therefore clear that the need to pay the appeal fee arose not from any failure on the part of the ED but from the manner in which the appellant chose to conduct its case. In the circumstances the Board finds there was no substantial procedural violation. Therefore the question whether reimbursement of the appeal fee would be equitable does not arise. The request for such reimbursement must be refused.

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

The file wrapper can be found here.