Saturday, 24 November 2012

T 1829/10 – Just Wanna Be Heard

In this case the Examining Division (ED) refused an application without oral proceedings (OPs) although the response of the applicant to the first notification included the following paragraph:

which could be translated as follows: “In case there are further fundamental objections regarding patentability, an interview or a hearing is considered appropriate. Minor amendments that are still considered appropriate could also be discussed by phone with the undersigned.”

As you might have expected, the Board came to the conclusion the ED should have granted OPs.

*** Translation of the German original ***

[2.1] The question to be answered here is whether the above […] cited final paragraph of the letter of the appellant dated January 27; 2010, contains a request for OPs within the meaning of A 116. The Board is of the opinion that this paragraph deals with three aspects, i.e. an interview, a hearing (Anhörung), and a phone call.

[2.2] According to the established case law of the Boards of appeal of the EPO, a request for an “interview”, i.e. a personal discussion, or for a phone call, is not a request for OPs. If such a discussion (Rücksprache) is proposed or requested by the applicant, it is within the discretion of the Examiner or the ED to grant the request or not to grant it (see also the Guidelines, C-VI 6.2 in their version of April 2010).

[2.3] A request for OPs is something fundamentally different. When OPs are requested by a party to the proceedings, then, pursuant to A 116(1), there have to be OPs before the Office can take a decision. This provision is mandatory and does not allow for any discretion, in contrast to the possibility of a discussion, which is not explicitly mentioned in the EPC.

[2.4] In the present case the applicant used the term “hearing” (“Anhörung”). As correctly explained in the impugned decision […] this expression is equivalent to “OPs” within the meaning of A 116(1). However, in this context the applicant did not explicitly use the expression “request”. It stated that a “hearing was considered appropriate” if there were “further fundamental objections regarding patentability”. However, the Board is of the opinion that when this wording is read in a fair and understanding manner, it can only mean that the applicant wanted to be heard again before the ED took a decision and, therefore, desired, and thus requested, OPs. Whether the term “request” is used or not is irrelevant in this context (see also T 263/91 [2, 3rd paragraph]). The only thing that matters is the intention of the applicant, which the Board considers to be clear and unambiguous in the present case.

If the ED had had any doubt whatsoever in this respect, it would have had to contact the applicant to clarify whether OPs pursuant to A 116(1) had indeed been requested or not, because this is an inalienable right of parties to proceedings before the EPO (see T 668/89 [3]; T 95/04 [3]). In contrast to a request for a discussion, the expression “appropriate” (sachdienlich) used by the applicant implies, in a request for OPs, that the ED has no discretion not to grant it.

[2.5] Decision T 263/91 cited in the impugned decision to refuse the application is not applicable to the present case because in the case [underlying the decision] the party only reserved the right to request OPs. In other words, the party only expressed that, for the time being, it did not yet file a request for OPs but might want to do so later on (see [2, 3rd paragraph] of the reasons). The situation to be assessed here rather compares to the situation underlying decision T 283/88 […] where the applicant suggested or proposed OPs, which the competent Board considered to constitute a request for OPs (see [4] of the reasons).

[2.6] Therefore, in the present case the ED was not entitled to take a decision refusing the application without summoning to the requested OPs beforehand. This is a violation of the inalienable right to OPs enshrined in A 116(1). Thus the impugned decision is void and has to be set aside.

[2.7] The right to OPs under A 116(1) is an important and essential part of proceedings before the departments of the EPO. A violation of this right, therefore, always constitutes a substantial procedural violation within the meaning of R 103(1)(a). The ED has taken a decision immediately following the applicant’s response to the (first and only) communication of the ED and, when doing so, has ignored the discernable intention of the applicant or at least has not tried to clarify the latter (cf. T 283/88 [4]). This is a fundamental procedural violation justifying the reimbursement of the appeal fee under R 103(1)(a). Pursuant to Article 11 RPBA, in such a situation the case has to be remitted to the first instance, and this is also what the applicant has explicitly requested. […]

If you are an attorney and if you want to avoid a useless appeal, you better formulate your request for OPs in terms that are unambiguous, even for an Examiner who has a bad day. In my opinion, wording the request as above is inviting trouble.

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

The file wrapper can be found here.


Roufousse T. Fairfly said...

I myself nearly oversaw the word "Anhörung", my brain initially only registered "blah blah blah" on the first reading. (It did look a first glance like the usual boilerplate). The examination should preferably have been resumed upon prejudicial revision under Art. 109.

I sometimes have the feeling that some applicants are deliberately trying to trip the division into committing a procedural error, for bringing about some tactical advantage (e.g.: a delaying of the procedure). For instance, a certain representative would often write that he isn't authorised by his client to attend the OP duly summoned as requested. Does this mean that no one will show up?

Besides ambiguous requests for an OP, I had problems with applicants asking in a generic fashion whether other opportunities would be provided for filing new amendments. Replying with a flat "no" would be a mistake, as you would be deciding not to admit documents you haven't even seen.

oliver said...

Thanks, Roufousse. It is always interesting to have the Examiner’s point of view.