T 937/09 – Salami Vice

Salami tactics may backfire on whoever uses it … including the Examining Division (ED).

The present appeal was filed against the refusal of an ECT application claiming a free-piston device.

The application contained 1 independent and 62 dependent claims.

In its first communication of December 14, 2006, the ED pointed out that claim 1 was not novel and that, in view of the great number of non-converging dependent claims, it was not clear which features were to be considered.

On March 20, 2007, the applicant filed a new claim 1 combining claims 1, 6, and 13 of the claims as originally filed. The ED again found this claim to lack novelty.

The applicant filed an amended claim, but the ED came to the same conclusion as before.

On February 22, 2008, the applicant filed a new claim 1 combining claims 1, 6, 13, and 28 of the claims as originally filed. The ED found this claim to lack inventive step because the added feature was a common measure. It summoned the applicant to oral proceedings (OPs) to be held on November 20.

On September 19, 2008, the applicant filed several requests. Independent claim 1 of auxiliary request 3 combined 1, 20, 46 and 48 of the claims as originally filed.

In the course of the OPs the applicant withdrew the main request as well as auxiliary requests 1 and 2, so that only auxiliary request 3 was still on file. The ED refused this request by invoking R 137(3).

The ED made the following statement (in English translation):

“… The characterising feature of what is now the main request on file, which had been filed as auxiliary request 3, concerns subject-matter that is completely different from the features that had been discussed in the course of the long examining proceedings. The springback volume is not mentioned in the claim any more, nor is the gas flux. Rather, the electric control for synchronising two pistons is the characterising feature. In view of this auxiliary request, a new novelty assessment would have been required.

When exercising discretion under R 137(5) in the presence of further limitations along a certain direction (which can be seen as “of funnel shape”) it is common practice to discuss the further limitations. The later in the proceedings [such limitations arise], the more critical the consideration of whether the amendment is to be admitted becomes.

In the present case, there was no further limitation: the electric control constitutes a wholly new domain that had not been covered in the proceedings yet. In view of the very late stage of the proceedings, the applicant had had enough opportunities to amend. For the sake of legal security, there is no reason to re-start the proceedings by examining along this different direction. Thus the ED refuses to give its consent under R 137(3) to the present main request.

For the sake of completeness, the ED wishes to point out that even if the former features (springback volume, gas change, etc.) had not been deleted, the domain covered by the new claim would have been completely different and would have required fresh in-depth examination. …”

The Board found R 137(3) EPC 2000 in its version of December 7, 2006, to be applicable and then went on:

*** Translation of the German original ***

[3.3] R 137(3) in this version reads:

“After receipt of the first communication from the ED, the applicant may, of his own volition, amend once the description, claims and drawings, provided that the amendment is filed at the same time as the reply to the communication. No further amendment may be made without the consent of the ED.”

When deciding on whether after the first communication further amendments are to be admitted or not, the ED has a margin of discretion under R 137(3), second sentence (see G 7/93 [2.1])

Criteria for exercising discretion

[3.4.1] According to the Enlarged Board of appeal (see G 7/93 [2.5]) the ED has to consider all relevant factors which arise in a case. In particular, it must consider both the applicant’s interest in obtaining a patent which is legally valid in all of the designated States, and the EPO’s interest in bringing the examination procedure to a close by the issue of a decision to grant the patent, and must balance these interests against one another.

[3.4.2] A 94(3) reads:

“If the examination reveals that the application or the invention to which it relates does not meet the requirements of this Convention, the ED shall invite the applicant, as often as necessary, to file his observations and, subject to A 123(1), to amend the application.”

Thus, the applicant has to be informed of deficiencies, in the form laid down in R 71(1)(2).

(a) Under R 71(2) any communication under A 94(3) shall contain a reasoned statement covering, where appropriate, all the grounds against the grant of the European patent. Therefore, this rule contains two requirements: First, the applicant has to be informed of all requirements of the EPC which are considered not to have been met. Secondly, for each of said requirements it has to be informed of all the legal and factual reasons which lead [the ED] to the conclusion that the requirement has not been met (T 951/92).

(b) In the travaux préparatoires for the EPC 1973 it was first planned to have the first requirement introduced as a mandatory requirement into A 90(2). In the notes regarding a first draft for an agreement on a European system of patent law dated May 29, 1961, number 2, it is pointed out that the ED should give all the objections in its communication (Prüfungsbescheid). However, the deliberations then led to a more flexible approach leaving it to the ED which reasons, and to which extent the reasons not to grant a European patent, should be summarised in a communication. This decision should be made so as to ensure procedural economy (J 32/95).

(c) Thus the EPC does not tell the Examiner what would be the most appropriate way of conducting the examining proceedings.

However, as a rule, the first communication should already contain a comprehensive assessment of the application so that the examining proceedings can be terminated with as few communications as possible. The first communication should already inform the applicant on all deficiencies of the application, including the objections regarding the dependent claims. As soon as the applicant has had the opportunity to amend once, the consent of the ED is required for further amendments.

When there is lack of unity or clarity, or when there are many dependent claims, it may sometimes appear to be more reasonable to raise only certain objections in the first communication. However, in such a case the applicant can only be expected to react to these objections and not to others of which it is not aware yet. Thus, if the Examiner, for reasons of procedural economy, only raises objections in subsequent communications although (s)he could have raised them before, (s)he has to take this fact into account when exercising discretion under R 137(3), second sentence. In other words, [the Examiner] cannot refuse his/her consent under R 137(3), second sentence, to amendments if they constitute an objectively appropriate attempt to overcome deficiencies that have only been criticised in a subsequent communication but which could have been criticised already in the first communication.

(d) The situation may be summarised as follows:

The admission under R 137(3), second sentence – in its version according to the decision of the Administrative Council of December 7, 2006 – of amendments of a European patent application filed after the first communication (see EPC, 13^th edition, EPO, 2007) is within the discretion of the ED.

Amendments filed by the applicant in response to a communication which had pointed out, in a substantiated manner, a particular deficiency for the first time therefore have to be admitted by the ED if this deficiency could already have been criticised in the first communication and if the amendments constitute an objectively appropriate attempt to overcome this deficiency.

[3.5] Apart from R 137(3), R 116(2) provides a particular rule regarding amendments of the application in case OPs are held: it is within the discretion of the ED not to take into account amendments of the application if they have not been filed before a point in time that is determined in the summons to OPs. However, the fact that amendments have been filed before this point in time mentioned in the summons to OPs according to R 116 […] does not mean that R 137(3) is not applicable. Requests filed in due time under R 116 can only be refused under R 137(3) if the ED’s discretion has been duly exercised, in application of the above mentioned criteria.

Application to the present case

[4.1] The first communication was posted on December 14, 2006. Subsequent to this communication the applicant has repeatedly filed amendments of the application before the ED refused the last set of claims on file, which had been filed as third auxiliary request on September 19, 2008. Thus the amended set of claims contains “further amendments” within the meaning of R 137(3), second sentence, the admission of which is within the discretion of the ED.

[4.2] In this context it has to be noted that the application comprises 63 claims, which is a relatively great number in comparison to the average number of claims.

[4.2.1] When the EPC was drafted and the question arose how many claims could be accepted, the legislator had to balance the interest of the general public to be able to determine the scope of protection without undue effort, and the interest of the patent proprietor to obtain comprehensive protection for the disclosed invention. When doing so, the legislator has chosen the means of claims fees in order to keep the number of claims within reasonable limits. The intention was to oblige the applicant to check whether all the claims it had filed were indeed necessary. This solution using fees avoids a strict delimitation which could never do justice to all particular cases. The fees also take into account the greater amount of work required for examining applications comprising a great number of claims (see Beier/Haertel/Schricker, EPÜ, Münchner Gemeinschaftskommentar, 1984, A 84, marginal numbers 132 and 133).

Subject to A 84, which requires claims to be drafted in a concise manner, the legislator, therefore, has subjected the admissibility of dependent claims only to the number of claims for which the applicant has paid the claims fees.

[4.2.2] As the present applicant has paid claims fees for all dependent claims, the greater amount of work needed for examining these claims has been taken into account.

[4.3] Claim 1 filed together with the letter dated February 22, 2008, comprised the features of claims 1, 6, 13, and 28 of the original application. The features of claim 28 were criticised for the first time in an annex to the summons to OPs dated April 11, 2008, in view of their contribution to inventive step. The features of original claims 6 and 13 were objected to for the first time in the communication of April 2, 2007, in view of their contribution to the novelty of the claimed subject-matter.

In contrast, claim 1 of auxiliary request 3 as filed with a letter dated September 19, 2008, comprised the features of claims 1, 20, 46 and 48 of the original application. Thus, in comparison to claim 1 filed with the letter dated February 22, 2008, the additional features of original claims 6, 13, and 28 were deleted and replaced by the additional features of original claims 20, 46, and 48.

[4.3.1] The amendment of claim 1 consisting in the deletion of the additional feature of original claim 28 is a response to the objection to deficiencies of claim 1 which was raised for the first time in the summons to OPs of April 11, 2008. This response was filed together with the response to the summons in a letter dated September 19, 2008. As these deficiencies were already present in original claim 28, they could have been criticised in the first communication.

As mentioned above (see [3.4.2]), R 71(2) does not oblige the Examiner to give all the reasons that stand against the grant of the patent in the first communication. If (s)he does not provide such reasons for dependent claims, the applicant cannot be expected to speculate on which objections could be raised against these claims based on e.g. the documents cited in the search report. Rather, the applicant may assume that the Examiner does not raise objections against these claims.

In the present case the ED never made substantiated statements on the dependent claims. As the applicant could not foresee what the course of the examining proceedings would be, it had to be granted the possibility of leaving the path to patentability it had chosen, as it has done by deleting the features of original claims 6 and 13 which had been introduced into the independent claim in order to overcome a previous objection.

[4.3.2] These amendments constitute an appropriate attempt to overcome the criticised deficiencies because this combination of claims was originally disclosed through the dependence of original claim 48 on claims 46 and 20 and because only an “A” document was cited against original claim 46, which means that, at least in the opinion of the Examiner carrying out the search, novelty and inventive step of its features were not challenged.

Thus, in view of the above principles the ED, when duly exercising its discretion, could not refuse its consent to the amendments of claim 1 of auxiliary request 3.

[4.3.3] Consequently, the amendments in claims 1 of what is now the main request, which corresponds to auxiliary request 3 discussed in the OPs before the ED, are admitted.

Reimbursement of the appeal fee

[5] By refusing the admission of the sole request on file the ED has committed a substantial procedural violation because it has refused to examine a request although the EPO had been paid for providing this service. [The Board] does not have to examine here whether this was caused by the fact that the evaluation of the performance of Examiners does not take into account the greater amount of work due to the great number of dependent claims. However, it should go without saying that the EPO should duly take into account services for which it demands fees [when evaluating] the agents responsible [for this work].

As this procedural violation was the reason for filing the appeal, it is equitable to reimburse the appeal fee under R 103(1).

The Board then remitted the case to the ED for further prosecution.

It is a pity that the Board has not made an obiter dictum on the situation under R 137 as amended in 2009.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.