Wednesday, 24 April 2013

T 1131/12 – Late & Too Late

This appeal was against the decision of the Examining Division (ED) to refuse the European application under consideration.

In a first communication dated August 27, 2002, the ED inter alia raised an objection of lack of inventive step over documents D1 and D2.

In a second communication dated June 28, 2004, an objection was raised that “essential features” were missing from claim 1 and that the feature of the amplifying circuit lacked clarity (A 84).

In a third communication dated June 29, 2006, the previous objection of missing “essential features” was withdrawn and a further objection of lack of clarity as regards the expressions “binary signal” and “binary digital signal” was raised.

The applicant amended the claims in response to each of the three communications. Two requests for accelerated examination were filed, on February 23, 2009, and June 7, 2011.

On October 24, 2011 (!) the ED refused the application on the grounds that claim 1 lacked clarity (A 84) due to the expression “binary digital” and that the subject-matter of claim 1 lacked an inventive step (A 56).

The applicant filed an appeal against this decision. In the notice of appeal the appellant requested that the decision be cancelled.

In the statement of grounds the appellant requested that a patent be granted on the basis of a set of claims accompanying the statement of grounds.

The board issued a summons to oral proceedings (OPs).

In a letter filed on January 31, 2013 the appellant contended that the ED had committed a “breach of the principle of legitimate expectations” and expressed doubts as to whether its right to be heard had been correctly exercised by the ED. The appellant argued that although an objection of lack of inventive step had been raised by the ED in its first communication of 27 August 2002, the two subsequent communications were silent on inventive step. The fact that the main reason in the decision to reject the application was lack of inventive step was surprising for the appellant.

[1.1] In the letter of 31 January 2013 the appellant requested a remittal to the department of first instance on two grounds: firstly that there was a “breach of the principle of legitimate expectations” in that the ED failed to point out in its second and third communications that the inventive step objection raised in the first communication was still considered relevant; and secondly that the right to be heard was not “correctly exercised”. No reasoning accompanied the second ground.

[1.2] It is sufficient here, with respect to the conduct of the first instance proceedings, to note that from the file history as well as from the grounds advanced by the appellant no fundamental deficiency, in the sense of an objective deficiency only ascribable to the ED and having a direct causal link with the outcome of the decision under appeal, could be detected which would justify an immediate remittal to the first instance as provided by Article 11 RPBA. The board wishes to emphasise that, although a delay of five years between a last communication and the written decision is wholly unacceptable, all the more so as a clear request for accelerated proceedings was made and ignored, action only being taken after the request was repeated, there is no causal link between this excessive delay and the outcome of the ED’s decision.

[1.3] As to the grounds as raised by the appellant […], the appellant raised the issue of “legitimate expectations” only a week before the OPs and the issue of a violation of the right to be heard only during the OPs themselves; the board considers that a finding of a substantial procedural violation is not appropriate for the following reasons.

[1.4] The board sees no reason to disregard Article 12(2) RPBA according to which the statement of grounds of appeal shall contain the party’s complete case. From this it follows that a party appealing a decision for the reason that it did not have an opportunity to comment on grounds on which the impugned decision is based is obliged to argue this ground of appeal in the statement of grounds. This applies all the more in ex parte proceedings since a further effect of such a complaint being raised late, i.e. later than filing the statement of grounds, is that the ED was prevented from considering the complaint within the scope of A 109, when deciding whether it would rectify its decision. The appellant’s argument that the ED in the present case would in any case have refused an interlocutory revision is merely speculative and therefore not convincing.

[1.5] Since the board cannot detect any fundamental deficiency as noted at point [1.2] supra, the request for reimbursement of the appeal fee filed and substantiated shortly before the OPs […] is refused pursuant to Article 12(1)(a) and (2) RPBA.

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

The file wrapper can be found here.