This is an appeal against the decision of the Examining Division (ED) to refuse the application under consideration for lack of novelty.
The notice of appeal was received on August 25, 2011.
On September 12, 2011 the ED found that the appeal was not to be rectified and that the case was to be referred without delay to the Boards of Appeal.
With a letter of October 24, 2011 the appellant filed a statement setting out the grounds of appeal together with sets of claims according to a new main request and new auxiliary requests 1 and 2.
[1] A 108 requires inter alia that a notice of appeal must be filed within two months after the date of notification of the decision and that a written statement setting out the grounds of appeal must be filed within four months after that date. In accordance with A 109(1), first sentence, if an ED whose decision is contested considers the appeal to be admissible and well founded it shall rectify its decision. It is evident that receipt of the statement of grounds of appeal is a prerequisite for an ED when applying the provisions of A 109(1), first sentence, to consider whether the appeal is well founded.
[2] In the present case, the ED issued the order to refuse interlocutory revision and to refer the case to the Boards of Appeal before any statement setting out the grounds of appeal was filed and before the expiry of the four month time limit for filing the statement of grounds.
By refusing interlocutory revision before the statement of grounds of appeal was filed together with amended claims according to a new main request and a new auxiliary request 1 and 2, the ED could not have considered whether these amended claims overcame the reasons for refusal before ordering that the case be referred to the Boards of Appeal.
[3] It is customary that an appealing party takes advantage of the two time limits provided for in A 108, first and third sentences respectively, by firstly filing a notice of appeal and later filing the statement of grounds and it has the right to fully exhaust those time limits. It is incumbent on the ED to wait until the filing of the full content of the statement of grounds or the expiry of the four month time limit, whichever comes first. In the present case the issuance of the order to refuse interlocutory revision before receipt of the statement of grounds deprived the appellant of the possibility of a fore-shortened appeal procedure provided by A 109 and amounts to a substantial procedural violation, see T 41/97 [5].
[4] However, despite the presence of a substantial procedural violation the board considers that it would not be equitable to reimburse the appeal fee under R 103(1)(a). The established procedural violation cannot have been causative in filing the appeal since it occurred after the notice of appeal had been filed.
[5] In accordance with Article 11 RPBA (OJ EPO 2007, 536 to 547) if fundamental deficiencies are apparent in the first instance proceedings a case is to be remitted to the department of first instance unless special reasons present themselves for doing otherwise. In the board’s view, no such special reasons are apparent and remittal is thus appropriate. Moreover, the appellant explicitly consented to the remittal to the department of the first instance.
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8 comments:
I see two distinct errors in this file:
1) The FO prematurely filled form 2701, erroneously indicating ticking at point 2.1 that the "statement of grounds [had] been filed within the time limit", even though the said four months limit hadn't even expired.
2) All three members of the division signed the form without further consideration.
Most examiners, whose job is to consider substantive matters, do not concern themselves with procedural matters (e.g. delays), which really are the province of formalities offices.
I nevertheless can't understand how the division could have sent on the file without reflecting on the absence of the grounds and requests.
The main request was for the grant of a patent based on the original documents. Since the division cannot grant prejudicial revision on an allowable auxiliary request, the case would have with 99,44% probability gone on to the board.
What is the point then to remit it to the ED. Time saving?
Article 11 RPBA prescribes that if fundamental deficiencies are apparent in the first instance proceedings a case is to be remitted to the department of first instance unless special reasons present themselves for doing otherwise.
The applicant was invited to comment, and consented to the remittal.
I wonder whether it would really not be equitable to reimburse the appeal fee in this case. The applicant most likely will have to appeal again. The requirement for reimbursement to be equitable that the substantial procedural violation was causative for the appeal seems reasonable to me in normal cases, but in this case the procedural violation (or maybe this remittal...) is causative for the second appeal.
Maybe the second appeal fee will be reimbursed on the basis of this substantial procedural violation, but I doubt that this same violation can count for a second time in the future second appeal procedure...
Before they began to apply with abandon Rule 12(4) RPBA, the Boards sometimes wrote in decisions that they shouldn't be considered as an "alternative examining division", so I think it is really a problem to send a file back. It is a bit like it if had decided that the applicant had a "right to two instances", and get the auxiliary requests examined by the division.
The division bungled, but I note that if the it had just sat on its thumbs and done nothing at all, then the file would have gone on to the board as per Art. 109(2), and there wouldn't have been any procedural error at all!!! Could one see Art. 109 period a sort of procedural limbo?
The earlier version Art. 109(1) EPC 1973 used to provide a delay of only one month for prejudicial revision (instead of three after 1999), which caused some scrambling. (The paperwork could sometimes take weeks to travel from the incoming mailbox to the examiner's desk, at which point one member or the other of the division could be unavailable.)
correction:
so I think it is really NOT a problem to send a file back.
"The division bungled, but I note that if the it had just sat on its thumbs and done nothing at all, then the file would have gone on to the board as per Art. 109(2), and there wouldn't have been any procedural error at all!!!"
Nice point. If the ED had completely ignored the notice of appeal, the situation would be the same as now (except with some more delay), but the Board would not have remitted. So it does not make much sense to remit now.
Another thought: would it not have been possible for DG3 to return the file to the ED as if nothing had happened (with a short note explaining how the appeal procedure works)? While I'm not in favour of being too creative with procedural rules, as far as I know the ED's decision on interlocutory revision is not formally notified to the applicant or outside world. According to decision G 12/91, point 7.6:
"Having weighed up the various arguments, the Enlarged Board of Appeal has reached the conclusion that the date a decision is signed is not the point in time at which the internal decision-making process is completed."
So if the EPO as a whole somehow manages to get the file back on the desk of the ED before the outside world notices that anything happened, that should be OK.
The problem might be that the ED's decision of 12 September shows up in online file inspection, even though it is not sent to the applicant.
Myshkin,
The solution you propose supposes the existence of a "kleiner Dienstweg", between DG1 and DG3, which doesn't and couldn't exist. The boards prize their independence, und das ist auch gut so. The file was in the board's lap (since 16.09.2011), and I can't see how it could turn the clock back or turn a blind eye when it was the board's registrar who received (on 24.10.2011) the documents containing grounds for appeal.
Form 2701 is systematically part of the record. The public is entitled to know the status of the file, and since the division's decision is limited by Art. 109 to a binary yes/no, a form is appropriate. This case is demonstration that you can't foresee every situation in the law.
I agree it is better to keep DG1 and DG3 as separate as possible (and that DG1 should do its best not to mess up like this again... it was not only the ED here that made a mistake).
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