T 2411/10 – A Bad Handover

This is an examination appeal.

Claim 1 as filed read (in English translation):

Positioning system for furnishings of a building, wherein these furnishings comprise at least one positioning signal transmitter, wherein the positioning signal transmitter is capable of delivering at least one positioning signal and/or comprise at least one positioning signal receiver, wherein the positioning signal receiver is capable of receiving at least one of these positioning signals, wherein positioning signal transmitter and positioning signal receiver cooperate in such a way that this cooperation makes it possible to identify the spatial position of the furnishings in the building.

When filing the application (on April 16, 2009), the applicant requested examination and paid the examination fee.

On August 27, 2009, the ESR was sent to the applicant. It contained the following declaration (my translation): 

“It is not possible to perform a search for the claimed technical means because both in the claims and in the whole original disclosure these means are only defined by their purpose but not by their technical realisation and constitution. This amounts to a non-remediable lack of enabling disclosure within the meaning of A 83. Thus a search is not only not purposive (zielführend), because an insufficiently enabling (Instande setztender, sic)  subject-matter cannot be patented, irrespective of its novelty and obviousness, but such a search, which presupposes the comparison and identification of technical features, cannot be performed at all. The application explains why IP numbers and GPS signals are not suitable for positioning objects in buildings, but it does not disclose the alternatives to those unfeasible technical solutions. The [Search Division] wishes to point out that this deficiency concerns not only the claims, but the whole subject-matter of the original application. As the latter is the only acceptable basis for amendments under A 123(2), it is not possible to remedy this insufficiency of disclosure, and the circumstances and Guidelines mentioned in the automatically generated general legal information (Rechtsauskunft) given in the following paragraph, which could trigger a search at a later stage, cannot be applied (finden … keine Anwendug, sic)in the present case.

The applicant is referred to the fact that such a search can be carried out in the course of the examination if the deficiencies underlying a declaration pursuant to R 63 have been remedied (cf. EPO Guidelines C-VI 8.2).”

The applicant protested on the very same day. Its representative pointed out that the EPO had searched the priority application, which showed that a search could be carried out. The applicant requested that a search be carried out or a appealable decision be given.

The application was published on October 21, 2009, together with the declaration under R 63.

There was no invitation under R 70(2).

The first communication of the Examining Division (ED) was issued on October 5, 2009. The Examiner, who was the person who had refused the search, repeated the objection.

When summoned to OPs, the applicant requested the addition of a legally competent member because there was a risk that the ED was not even competent as no declaration under R 70(2) had been sent. This request was granted.

On April 15, 2010, the application was refused.

The applicant then filed the appeal.

*** Translation of the German original ***

Competence of the ED

[2.1] Pursuant to R 10(1), the Receiving Section (RS) shall be responsible for the examination on filing and the examination as to formal requirements of a European patent application up to the time when the ED becomes responsible for the examination of the European patent application under A 94(1).

Under R 10(2), subject to paragraphs 3 and 4, the ED shall be responsible for the examination of a European patent application under A 94(1) from the time when a request for examination is filed.

R 10(3) stipulates: “If a request for examination is filed before the ESR has been transmitted to the applicant, the ED shall, subject to paragraph 4, be responsible from the time when the EPO receives the indication under R 70(2).

R 10(4) stipulates: “If a request for examination is filed before the ESR has been transmitted to the applicant, and if the applicant has waived the right under R 70(2), the ED shall be responsible from the time when the search report is transmitted to the applicant.”

[2.2] R 70(2) to which R 10(4) refers, has the following wording:

“If the request for examination has been filed before the ESR has been transmitted to the applicant, the EPO shall invite the applicant to indicate, within a period to be specified, whether he wishes to proceed further with the application, and shall give him the opportunity to comment on the search report and to amend, where appropriate, the description, claims and drawings.” 

Once it has received this invitation, the applicant has the choice of pursuing the application, or of withdrawing it, in which case the examination fee is reimbursed (see Article 11(a) RRF). The purpose of this regulation is to allow the applicant to decide, based on the search report, whether it is worthwhile, in view of the chances of success, to pursue the proceedings.

[2.3] In the present case the appellant had requested examination when it filed the application, i.e. before the declaration under R 63 (in its version in force until March 31, 2010) that it is impossible to carry out a meaningful search, which is deemed to constitute the ESR. The appellant has not waived its right to an invitation under R 70(2), neither when it filed the application, nor at a later stage. Thus the RS should have invited the appellant to declare within a time limit to be determined whether it wanted to proceed further with the application.

However, an invitation under R 70(2) can only be omitted if the applicant has clearly and unmistakably expressed its will vis-à-vis the EPO to begin the examination proceedings after having taken note of the search report. This is precisely what has not happened in the present case. The appellant’s letter dated August 27, 2009, cannot be understood to constitute such a declaration because it referred to the search that had not been carried out and aimed at obtaining that a search be carried out. It does not express the will to start substantive examination. The interpretation of the ED according to which the fact that an appealable decision can only be rendered in examination proceedings and that, consequently, the corresponding request could be understood to constitute a declaration of the wish to proceed further with the application (Aufrechterhaltungserklärung) within the meaning of R 70(2) clearly contradicts the declarations of the appellant and emphasises formalities that do not correspond to the will of the appellant. Nor can the response to the communication of the ED (Prüfungsbescheid) be understood as an agreement to the examination proceedings because the appellant was obliged to react in order to avoid the legal fiction of deemed withdrawal.

Conjectures of the RS or the ED, respectively, as to why an applicant might want to wish the examination proceedings to be started may not replace an invitation and declaration that is legally required in application of R 70(2). The clear and mutually exclusive allocation of this responsibility in the Convention prevails over considerations of procedural or cost economy (J 5/01).

[2.4] In the end the absence of an unambiguous declaration of the wish to proceed further with the application means that the legal conditions for a transfer of competence from the RS to the ED (R 10(3)) were not satisfied. Thus the impugned decision was taken by the ED when it was not competent, and has to be set aside for this reason.

Thus the case has to be remitted to the RS, which is still competent.

Reimbursement of the appeal fee

[3] A decision taken by a department that is not competent amounts to a substantial procedural violation justifying the reimbursement of the appeal fee (R 103(1)(a)).

Therefore, the Board grants the corresponding request.

Possibility of and need for a search

[4] The ED was of the opinion that there was no need for a late search (Nachrecherche) because even in the absence of further prior art documents a decision could be taken on the basis of insufficient disclosure. In decision T 1242/04 [8.3] the Board has explained that R 45 relates only to the practicability of a search and not to the potential relevance of its results in subsequent substantive examination. The search is the basis for substantive examination and not vice versa. In the present case a search appears to be possible.

[4.1] According to the ED it is not possible to search for claim features that are defined only by their purpose. The Board is of the opinion that the opposite is true: The broader the definition of a feature, the easier it is to find evidence for it in the prior art. In exceptional cases it may be clear from the outset that there is no meaningful prior art (e.g. when a perpetuum mobile is claimed), but the present case is not such a case.

[4.2] The objections under A 83 do not prove that a search is impossible either.

According to the ED the claimed subject-matter cannot be carried out or searched because the desired positioning is not more precise than what could be obtained with the state of the art cited in the application. The Board concludes from this statement that a general search in the field of positioning technology was possible and could have been meaningful. As a matter of fact, from a technical point of view, it is indeed plausible that it is possible to position a radio, infrared or ultrasound transmitter. The question of whether the positioning principle can be searched is not related to the obtainable positioning precision. Objectively speaking, the application does not require revolutionary technical means but mostly uses known technical (e.g. piezoelectric) elements. Insofar as the use of such elements is obvious for the purpose under consideration, they also have to be feasible and searchable, for this very reason (independently of the question of whether a patent can be granted in the end). Also the state of the art can under certain circumstances help to determine whether an invention can be carried out, which means that the question of feasibility cannot necessarily be considered independently of the state of the art.

[4.3] As a search is a requirement for substantial examination and as a search was possible, the application should not have been refused without a search. The case law has acknowledged that an application may only be refused by the ED without a late search (Nachrecherche) when the only technical features are notorious (see T 1924/07 [10]). The present case is not such a case.

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

The file wrapper can be found here.