Friday, 22 November 2013

T 1020/13 – One For All

This is an examination appeal.

On November 29, 2011, the Examining Division (ED) had issued a communication in which it raised objections under A 84 against the claims filed on June 13, 2011.

In response to this communication the applicant filed a new set of claims on May 19, 2012.

The ED then refused the application and justified this refusal by explaining that claim 1 on file did not comply with the requirements of A 84 (because the claimed tool was defined via an object that was not part of the tool).

The applicant requested a reimbursement of the appeal fee because its right to be heard had been violated.

In the following extract Board 3.2.06 deals with the admissibility of the appeal.

*** Translation of the German original ***
[1] The notice of appeal, which was received on April 14, 2013, and which, according to the appellant, contained the whole statement setting out the grounds of appeal, contains a request for reimbursement of the appeal fee based on a violation of the right to be heard (A 113(1)) by the ED. The appellant is of the opinion that its right to be heard had been violated inter alia because it had been refused an opportunity to comment on the arguments of the ED regarding the features that had been added to claim 1 of May 19, 2012, in view of the clarity objection pursuant to A 84, which was decisive for the refusal […].

The reasons invoked by the appellant made directly clear to the Board what [the appellant] believed to be a procedural violation. If, based on these reasons, the violation of the right to be heard invoked [by the appellant] would have to be confirmed, then, as a rule, the Board would have to set aside the decision and remit the case to the first instance, in application of Article 11 RPBA. Thus the appeal is sufficiently substantiated (begründet), at least in respect of this alleged substantial procedural violation. When a substantial procedural violation is invoked in the statement of grounds of appeal and sufficiently substantiated, then it is irrelevant (unerheblich) for the decision on the admissibility of the appeal whether the appeal is also sufficiently substantiated in regard of the main grounds (tragende Gründe) of the decision (in this case, in regard of A 84). As the Board considers all other admissibility requirements to have been complied with, the appeal is admissible.

The Board finally found that the appellant’s right to be heard had not been violated and remitted the case to the ED for further processing on the basis of the third auxiliary request.

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

The file wrapper can be found here.


DrZ said...

Not being able to speak German and having to rely on the machine translation of reason it seems that the reason the opponent's right to heard was not violated is because clarity had already been raised in the proceedings, just not in respect of the refused claims.

If that is correct, that seems remarkably generous to the ED

Myshkin said...

From what I understand from the reasons, the unclear feature had been objected to earlier in the proceedings. The applicant had tried to overcome the objection by argument and by adding a further feature. In the refusal, the Division explained why it did not agree with the arguments and why the added feature did not render the feature objected to clear. According to the Board, this did not infringe Art. 113(1).

So it is probably less remarkable than what you gathered from the machine translation. While it is true that the Division had not raised the clarity objection in respect of the refused claim, it only follows from this decision that filing arbitrary amendments does not force the ED to repeat essentially unchanged objections in yet another communication. If the objection has been sufficiently explained and the applicant fails to address the core of the objection but only makes some cosmetic amendments and argues "different claim so objection is now moot", then an ED may refuse.