T 2134/12 – Just Keep It

In this case the Examining Division (ED) granted interlocutory revision and then sent the case to the Board of appeal for a decision on reimbursement of the appeal fee. So far so good. There was only one problem – the appellant had never asked to be reimbursed.

*** Translation of the German original ***

  

[1] Pursuant to R 103(2) the department whose decision is impugned shall order the reimbursement if it revises its decision and considers reimbursement equitable by reason of a substantial procedural violation. In all other cases, matters of reimbursement shall be decided by the Board of appeal.

[2] R 103(2) codifies the case law of the Legal Board of appeal (J 32/95) in respect of R 67 EPC 1973 (see explanations to the Implementing Regulations, Special edition  n°1, OJ EPO 1999, 713). This case law has been confirmed by the Enlarged Board of appeal  in its decision G 3/03. Accordingly, the first instance department which revises its decision has to examine whether the conditions for a reimbursement of the appeal fee have been satisfied, irrespective of whether the appellant has indeed made such a request. If the department reaches the conclusion that the conditions for a reimbursement have not been satisfied, it cannot order the reimbursement of the appeal fee and it does not have to deal with the question of reimbursement of the appeal fee in its decision pursuant to A 109(1). According to the case law the appellant is not adversely affected by such a decision (G 3/03 [3]). If reimbursement has been requested, then the department considering that the conditions for reimbursement have not been satisfied is not entitled to dismiss the request. Rather, it has to remit the request to the Boards of appeal (G 3/03 [3.4, 4]).

[3] In the present case neither the notice of appeal dated July 11, 2012, nor the statement of grounds of appeal dated August 8, 2012, contain a request for reimbursement of the appeal fee. Nor does the file contain anything indicating that such a request was made at a later stage. According to the case law cited above the ED, therefore, should not have remitted the case to the Board in order to have a decision on the reimbursement of the appeal fee. Pursuant to R 103(2) the ED was indeed obliged to examine whether it considered the requirements for a reimbursement of the appeal fee to have been met. As the ED denied this and as there had not been any request for reimbursement, there was no need for a corresponding statement in the communication dated October 5, 2012. However, the deficient statement in the communication cannot be understood to be a decision refusing [reimbursement], because the ED was not entitled to decide [on that matter]. Once the decision had been revised by the ED, and as a consequence of the fact that no request for reimbursement had been filed together with the appeal, there was no pending matter (verfahrensanhängiger Gegenstand) on which the Board had to take a separate decision (cf. T 242/05 [2.1-3]). The decision having been revised on July 11, 2012, the appeal proceedings were no longer pending (T 242/05 [2.3]). Consequently the remittal to the Board which had been ordered by the ED on October 1, 2012, in order to have a decision on the reimbursement of the appeal fee is not based on a procedural matter (Verfahrensgegenstand) which could have been entrusted to the Board. In view of these facts the Board has to order a remittal of the case to the remitting ED (see in this context T 242/05 [2.3-4] and T 1703/12 [3,4]; although in the present case the ED does not have to decide on the admissibility of a request for reimbursement of the appeal fee that had been filed after the revision of the appealed decision, the termination of the grant proceedings is within the competence of the ED). […]

The case is remitted to the first instance.

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

The file wrapper can be found here.

T 726/10 – For Information Only

In this case the Board found that the Examining Division (ED) should have granted interlocutory revision.

The appellant had filed a new claim together with its statement of grounds of appeal (amendments with respect to claim 1 as refused – for lack of novelty – are highlighted):

An in-line humidifier A system 10 for humidifying a gas for infusion into a patient eye comprising:

·      a gas source 12;

·      an in-line humidifier 20 comprising a housing 22 having an inlet and outlet connection 26a, 26b in communication with an interior of the housing 22 through which is flowed a gas in one direction extending between the inlet connection 26a to the outlet connection 26b;, and a humidifier section 24 disposed within the housing 22, the humidifier section 24 including a material that can releasably retain liquid therein;

·      a gas inflow instrument 4; and

·      tubing 16 extending (a) between the gas source 12 and inlet connection 26a and (b) between the outlet connection 26b and gas inflow instrument 4,

wherein the humidifier section 24 is disposed within the housing 22 so the gas entering through the inlet connection 26a flows through the humidifying section 24 in one direction,

wherein the gas source 12, tubing 16, in-line humidifier, and gas inflow instrument 4 are configured and arranged such that gas only flows in one direction from the gas source 12, through the tubing 16, into the in-line humidifier 20 via inlet connection 26a, through the humidifier section 24, out of the in-line humidifier 20 via the outlet connection 26b, through the tubing 16 and out of the gas inflow instrument 4 into the eye,

whereby the flowing gas can be humidified by the material, and so the humidified gas exits the housing 22 via the outlet connection 26b and is delivered to the eye, where the flowing gas is selectively humidified as it flows through the in-line humidifier 20 by at least some of the liquid releasably retained within the material, and

wherein the gas is supplied to the eye via the gas inflow instrument 4 at a pressure between 0 and 100 mm Hg.

[2] According to A 109(1) “[i]f the department whose decision is contested considers the appeal to be admissible and well founded, it shall rectify its decision”.

[3] According to the established case law of the boards of appeal, an appeal is to be considered well founded if the objections on which the refusal of the application was based are overcome by the main request of the appeal. Other possible irregularities do not preclude rectification of the decision, since an applicant should have the right of examination in two instances (for example T 139/87, T 47/90, T 794/95).

[4] Claim 1 of the request which formed the basis for the impugned decision has been amended such that present claim 1 is now directed to a system for humidifying gas for infusion into a patient eye comprising a gas source, as defined in former claim 5. Moreover, present claim 1 comprises further additional features. In particular, a gas inflow instrument is now also defined as allowing the gas to be supplied to the eye via the gas inflow instrument at a pressure between 0 and 100 mm Hg.

[5] As the appellant correctly remarks, claim 5 was not objected to in the impugned decision.

[6] The decision under appeal explains that document D1 discloses an in-line humidifier for humidifying a gas. More particularly, however, document D1 concerns a system for connection to the respiratory tract of a patient comprising a filtering device in the form of a so-called heat and moisture exchanger connected to a tracheal tube on one side and to a mechanical breathing device, such as a respirator, on the other side. According to D1,

“heat and moisture exchangers operate in such a way that the moisture of the air exhaled by the patient is accumulated and stored in an air-permeable material and thereafter partly evaporates during inhalation and is returned to the patient in the air inhaled”.

The aim of the invention of document D1 is, in particular,

“to provide [such] a filtering device which [...] takes up a small volume while still having good bacteria-filtering and heat/moisture exchanging qualities”.

From the disclosure of document D1 it cannot be derived how the system of document D1 could be suitable for humidifying gas for infusion into a patient eye. This aspect is not addressed in the impugned decision either. The quantity of air circulating in the heat and moisture exchanger of document D1 (several litres every respiration, corresponding to the patient’s lung capacity) does not seem to be comparable to the quantity suitable for infusion into an eye. Additionally, from a reading of document D1 the Board cannot establish the disclosure of a gas inflow instrument out of which gas flows into the eye at a pressure between 0 and 100 mm Hg.

[7] Hence, at least due to the amendments mentioned above, the novelty objection over document D1, on which the impugned decision is based, does not apply to the subject-matter of claim 1.

[8] In an obiter dictum in the impugned decision and in the preceding written procedure, the ED held that the term “selectively”, which is still present in claim 1 as now on file, lacked clarity. Moreover, it was held that claims 6 to 8, the features of which are now present in claims 1, 5 and 6, did not fulfil the requirements of R 43.

However, the impugned decision is not based on grounds of which objections of non-compliance with A 84 and R 43 form part.

[9] As already found in decision T 1640/06, objections that do not form part of the grounds for a refusal of an application, in particular objections in obiter dicta, can be meant as voluntary information to an applicant on the preliminary opinion of the ED. This could assist the applicant if it came to subsequently considering said objections in detail. For this reason, it is in particular not necessary that the applicant is given an opportunity to present comments according to A 113(1) on said objections, nor that said objections are considered in oral proceedings according to A 116, in order for the ED to arrive at a final decision. Accordingly, the Board is of the opinion that the question whether or not the claims filed with the statement setting out the grounds of appeal take into account the remarks made in the obiter dictum is irrelevant for deciding whether interlocutory revision should be granted or not.

[10] Hence, the ED should have considered the appeal to be admissible and well founded in view of the reasons forming the basis of the impugned decision and should have rectified said decision in accordance with A 109(1).

[11] In accordance with A 111(1), it is left to the Board to decide whether to exercise the competence of the department which was responsible for the decision appealed or to remit the case to that department for further prosecution. In this evaluation, the right of a party to two instances has to be considered. In view thereof, the Board decides to remit the case to the department of first instance for further prosecution.

[12] The ED should examine whether the present request fulfils all the requirements of the EPC. In particular, since the amendments involve a substantial shift of the subject-matter of the independent claim, other documents dealing with the administration of air under pressure into the interior of a patient’s eye might have to be analysed in more detail.

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

The file wrapper can be found here.

NB: This decision has also been discussed and commented on Le blog du droit européen des brevets (here).

T 1703/12 – Nothing Left

In this case an applicant (and the Examining Division) had to learn that a request for reimbursement of the appeal fee will not be examined by the Boards if it is made after interlocutory revision has been granted - which confirms earlier case law.

[1] According to G 3/03, in the event of interlocutory revision under A 109(1), the department of first instance whose decision has been appealed is not competent to refuse a request of the appellant for reimbursement of the appeal fee, but has to submit this request to the board of appeal. This holds true if the request for reimbursement of the appeal fee was filed before the examining division granted interlocutory revision.

[2] In G 3/03 the Enlarged Board further stated that R 67 EPC 1973 (now R 103(1)(a)) provided that, in the event of interlocutory revision, reimbursement of the appeal fee should be ordered by the department of the first instance whose decision has been impugned, “if such reimbursement was equitable by reason of a substantial procedural violation”. From the wording of this provision it followed that the department of the first instance had to examine whether the requirements for reimbursement of the appeal fee were met, regardless of whether or not the appellant had actually submitted such a request. If the department of the first instance came to the conclusion that these requirements were not met, it could not order reimbursement of the appeal fee. In the absence of a request for reimbursement of the appeal fee, the decision of the department of the first instance granting interlocutory revision pursuant to A 109(1) would make no mention of the issue of reimbursement of the appeal fee, and the appellant would not be adversely affected by the decision (point [3] of the reasons). In case of interlocutory revision and reimbursement of the appeal fee not being contentious, the appeal was not remitted to, and thus would not be pending before, a board of appeal, the decision under appeal having been set aside and the appeal allowed by the department of the first instance (point [2] of the reasons).

[3] In the present case, the request for reimbursement of the appeal fee was only filed after interlocutory revision had been granted. At that time the appeal procedure was no longer pending, because the appeal had been fully dealt with and the appellant was not adversely affected. As a consequence, the request was submitted in the absence of a pending appeal and cannot, hence, constitute an ancillary issue to be dealt with in appeal proceedings. The reimbursement of the appeal fee is linked to the appeal procedure and cannot be separated from it.

[4] That being so, in the case at hand no appeal exists from a decision of a department of first instance for which the boards of appeal are responsible pursuant to A 21(1) and the Board is not empowered to decide on the request for reimbursement. Since no appeal procedure is pending, the Board can only remit the case to the department of first instance (following decisions T 21/02 and T 242/05). […]

The case is remitted to the department of first instance for further prosecution.

NB: Note that in T 242/05 the Board had added (my translation from the French):

“… Thus the first instance is fully competent for deciding that such a request is inadmissible. Consequently, the first instance should decide, and refrain from submitting this kind of case to the Boards, which is useless.” (my emphasis)

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

The file wrapper can be found here.

T 1034/11 – Some Critical Remarks

This is an examination appeal.

The Examining Division (ED) had found claim 1 on file to violate A 123(2) and had made “further remarks” according to which the subject-matter of claim 1 was not sufficiently disclosed (A 83), claims 8 and 18 violated A 123(2), claims 2 and 4 to 18 were not clear (A 84), claim 18 was not new over D3 (A 54) and claims 1 and 8 did not involve an inventive step with respect to D3 (A 56).

The appellant filed claims that overcame the A 123(2) objection, but the ED did not grant interlocutory revision.

The Board expressed its disagreement with the way in which the ED had proceeded:

[2.2] Claim 1 according to the appellant’s main request […] is […] clearly directed to overcoming the only objection raised in section II (“REASONS FOR THE DECISION”) of the decision for refusing the application. […]

[3.1] Under the heading “FURTHER REMARKS” in Section III. of the decision, the ED raised further objections under A 54, A 56, A 83 and A 84 against the patentability of the application.

[… C]laim 1 was found not to be allowable for lack of inventive step of its subject-matter (A 56).

[3.4] In summary, the ED arrived at the conclusion that the application as originally filed did not comply with A 83 because it did not disclose how to obtain the nonlinear coefficients referred to in claim 1. On the other hand, in its argumentation against inventive step, the ED considered that the same feature, which was regarded as not sufficiently disclosed in the application, belonged to the skilled person’s general knowledge. By combining D3 with this general knowledge, the skilled person would have arrived at the claimed subject-matter without involving an inventive step.

[4.1] Apart from the evident incongruity between the arguments given in the contested decision to support the lack of disclosure (A 83) and the lack of inventive step (A 56), the only objection that appears to have been raised at the oral proceedings after the applicant had submitted an amended claim 1 (“main request II”) related to the lack of disclosure of a particular feature of this claim […]. Indeed, the format of the decision appears to confirm that the only reason for refusing the application was the lack of compliance of the amended claim 1 with the requirements of A 123(2).

[4.2] As pointed out above, claim 1 according to the appellant’s main request no longer includes the offending feature and thus overcomes the A 123(2) objection given in the contested decision as ground for refusing the application.

[5.1] According to the case law of the boards of appeal, an appeal by an applicant of the European patent is to be considered well founded within the meaning of A 109(1) if the main request of the appeal includes amendments which clearly meet the objections on which the ED’s decision to refuse the application was based. In such a case the department that issued the contested decision must rectify the decision. Irregularities other than those that gave rise to the contested decision do not preclude rectification of the decision (cf. Case Law, VII.E.13.1).

[5.2] Despite the fact that the objection under A 123(2) given as reason for refusing the application had been overcome by claim 1 according to the main request, the ED decided not to grant the interlocutory revision under A 109(1). This appears to imply that the other objections raised in section III of the decision were regarded as being integral part of the reasons for refusing the application and that these objections had not been met by the appellant’s main request.

[5.3] However, when a decision is based on several grounds supported by respective arguments and evidence, it is of fundamental importance that the decision as a whole meets the requirements of A 113(1). The fact that the appellant had no opportunity to comment on all the grounds on which the decision appears to have been based constituted a substantial procedural violation within the meaning of A 113(1) and R 103.

[5.4] For these reasons the decision under appeal must be set aside and the case remitted to the department of first instance for further prosecution.

[5.5] In these circumstances, it is equitable to order the reimbursement of the appeal fee in accordance with R 103(1)(a).

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

The file wrapper can be found here.

T 1680/11 – Welcome To No Man’s Land

Sometimes the misbehaviour of an Examining Division (ED) can lead an applicant into a weird situation where there is not much help to be expected from the Board of appeal.

On June 6, 2011, the ED refused the application under consideration. The applicant filed an appeal in due time. It requested that the patent be granted on the basis of the claims that had been refused by the ED.

The ED granted interlocutory revision but refused the reimbursement of the appeal fee. The Board decision contains the corresponding form 2701 :

However, on August 12, 2011, the ED informed the applicant that this decision was corrected and ... that interlocutory revision was refused!

The ED provided a justification that is ... surprising, to say the least (in France we would say “ça vaut son pesant de cacahuètes”) (my English translation):

“EPO form 2701 dated July 27, 2011, and the corresponding decision on interlocutory revision dated August 3, 2011, do not reflect the actual intention of the ED, according to which interlocutory revision cannot be granted.

Pursuant to R 140 only obvious mistakes can be corrected in decisions of the EPO. Thus it has to be examined whether such an obvious mistake within the meaning of R 140 has occurred in the present case.

In the present case, the choice of box (i) on EPO form 2701 cannot correspond to the intention of the ED because in its notice of appeal dated July 4, 2011, the applicant expressly maintained the main request that had been refused and the ED had come to the conclusion that interlocutory revision could not be granted.

Moreover, it has to be noted that the fact that the reimbursement of the appeal fee could not be granted and that this decision was left to the Board of appeal provides a clear hint to the proper intention of the ED.

Finally, the fact that the box was erroneously ticked constitutes an obvious mistake because in the opinion of the ED, the grant of interlocutory revision constitutes a substantial procedural violation. As the applicant requires the Board to examine the main request that had been refused, the grant of interlocutory revision on the basis of the auxiliary request would have the consequence that the applicant would have to file a second appeal and pay a second appeal fee, which is unacceptable (unzumutbar), even if reimbursement of this appeal fee can be requested.

In the present case, it is in particular the combination of interlocutory revision on the basis of the unamended main request and the refusal to reimburse the appeal fee that the ED considers to be unacceptable (nicht akzeptabel).

Thus the choice of the combination of interlocutory revision and the refusal to reimburse the appeal fee by the ED was not intentional; the actual intention of the ED was to remit the entire case to the Board of appeal pursuant to A 109(2).

Therefore, in the present case the ED comes to the conclusion that the decision announced on EPO form 2709 dated July 27, 2011, and the corresponding grant of interlocutory revision dated August 3, 2011, constitutes an obvious mistake that should be corrected pursuant to R 140.”

This communication was not signed; there was only the name of a formality officer in the letterhead.

Believe it or not, the original signed form appears to have been ‘doctored’; here is what is now accessible via the online Register:

During the oral proceedings before the Board, the applicant endorsed the opinion of the Board that the appeal did not cover substantive aspects and only requested the reimbursement of the appeal fee.

The applicant argued that in spite of the decision to grant interlocutory revision, the ED had not granted a patent as requested. It was to be expected that the ED would refuse the request for the same reasons as in the impugned decision. Therefore, the appeal was not granted, nor was the decision reviewed by the Board. As the applicant had paid an appeal fee, this situation resulted in a substantial procedural violation. In T 691/91 it had been decided that a grant of interlocutory revision could be a decision ultra vires justifying the reimbursement of the appeal fee.

Here is what the Board had to say on this case:

*** Translation of the German original ***

Pendency (Anhängigkeit) of a substantive appeal

[2.1] The decision to grant interlocutory revision dated July 2011 and duly signed by the three members of the ED constitutes a legally effective decision pursuant to A 109(1), first sentence.

The fact that the appellant desired to maintain the main request, which had been refused, cannot alter this finding, be it only because an ED can indeed change its opinion on the grant of a patent in view of the arguments contained in the statement of grounds of appeal.

[2.2] According to the communication dated August 12, 2011, this decision granting interlocutory revision was to be corrected so that it was set aside. It may be left unanswered whether such a correction is at all possible, because a correction can only be made by the competent entity (Stelle) in a form that is identifiable as a decision. As the communication dated August 12, 2011, has not been signed and does not identify the entity of the EPO that is responsible for its content, it is not identifiable as a decision of the competent ED of the EPO.

[2.3] Thus there is no pending appeal and the Board of appeal only has to decide on the request for reimbursement of the appeal fee.

As far as the substantive examination of the application is concerned, it is the ED that remains competent.

Reimbursement of the appeal fee

[3.1] The appeal fee is reimbursed in the event of interlocutory revision or where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation.

[3.2] In the present case even the appellant does not contest any more that the fact that its request for a telephone interview (filed in a letter dated June 11, 2010) was not granted, does not constitute a substantial procedural violation.

Moreover, the impugned decision is reasoned and based on reasons which the appellant was able to comment, i.e. a violation of A 123(2) of which it had been made aware as soon as in the communication dated March 30, 2010. Thus there was no substantial procedural violation in this respect either.

[3.3] However, the appellant is of the opinion that the above mentioned decision to grant interlocutory revision did constitute a substantial procedural violation justifying reimbursement of the appeal fee because its request for the grant of a patent according to the documents filed on June 11, 2010, had not been allowed and because another refusal based on the very same reasons as the impugned decision is to be expected.

As a decision granting interlocutory revision pursuant to A 109(1), first sentence, does not have to be reasoned, the decision of the ED only shows that the ED considers the appeal to be admissible and reasoned, that it sets aside the impugned decision and continues the proceedings.

Moreover, and above all, the decision to grant interlocutory revision cannot be the cause for the filing of the appeal because it – necessarily – has been made after the appeal has been filed.

Therefore, the grant of interlocutory revision cannot constitute a substantial procedural violation justifying the reimbursement of the appeal fee.

[3.4] The factual situation underlying decision T 691/91 cited by the appellant differs from the present factual situation as follows: The decision impugned by means of a second appeal by the then applicant was not, in terms of content, a decision granting interlocutory revision within the meaning of A 109(1), first sentence, but dealt with a correction of the first decision of the ED refusing [the application under consideration] in the sense that the decision did not only concern claims 1 to 4, which were the only claims that had been taken account of in the first decision, but also claims 5 to 13.The latter should also be refused. In this respect the ED was not competent (“ultra vires”) to take the second decision, which had been referred to as “rectification decision”, but the decision would have had to be directly remitted to the Board of appeal. This is what constituted the procedural violation which, according to the decision of the Board of appeal, justified reimbursement of the appeal fee paid for the second appeal.

In contrast, in the present case the decision of the ED granting interlocutory revision constitutes an effective decision within the meaning of A 109(1), first sentence, for which the department was competent according to this provision and which could not have been corrected or otherwise validly amended because the letter dated August 12, 2011, does not qualify as a decision, be it only for formal reasons. […]

The request for reimbursement of the appeal fee is dismissed.

I wonder what will now happen. It may be expected that the ED will again refuse the application, which should trigger a second appeal. So in the end the applicant will have to pay two appeal fees, just because the EPO behaved in a very unprofessional way, and there is little if any hope for reimbursement of one of these fees. What a shame.

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

The file wrapper can be found here.

T 1994/11 – A Quick Shot

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.

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

The file wrapper can be found here.

T 1518/12 – Serves You Right

The appeal was filed against the refusal of the application under consideration (claiming a process for preparing acyclic HCV protease inhibitors) for lack of inventive step.

In a first communication under A 94(3) the Examining Division (ED)  had expressed the opinion that the requirements of A 83 and A 84 were not met and that the claimed subject-matter lacked an inventive step. The communication stated that the application described a synthetic route for the preparation of certain compounds in general terms but did not give any example substantiating the success or feasibility of that route, and concluded that there was no substantiation that the technical problem had been solved.

The applicant replied by filing claims amended in response to the objections under A 83 and A 84. As regards the objection of lack of specific examples to substantiate the feasibility of the claimed process, it referred to tables 1 and 2 of the application as filed which lists 55 compounds that may be prepared by the claimed process.

The ED then refused the application. In its decision it reiterated the inventive step objection. It referred to the appellant’s argument based on tables 1 and 2 of the application as filed but, since it considered that those pages did not provide sufficiently specific information, maintained its view that the applicant had neither substantiated nor provided convincing arguments that the claimed process in fact solved the problem underlying the application.

In its notice of appeal, the applicant pointed to examples 4, 5 and 6 of the first priority document as descriptions of different possible routes of the claimed process. The appellant argued that these examples, which were present on the file, substantiated the solution of the problem underlying the present invention.

The ED granted interlocutory revision, but referred the request for reimbursement of the appeal fee to the Board.

[1] The ED has allowed the appeal which has been forwarded to the Board solely to decide on the appellant’s request for reimbursement of the appeal fee. That has been done pursuant to R 103(2) EPC (see also J 32/95 and G 3/03).

2. The provision which the Board must consider is R 103(1)(a) which, as relevant for the present case, reads:

“(1) The appeal fee shall be reimbursed

(a) in the event of interlocutory revision …, if such reimbursement is equitable by reason of a substantial procedural violation …”

There are thus three conditions to be satisfied – interlocutory revision must have been allowed, a substantial procedural violation must have occurred, and reimbursement because of that violation must be equitable. Interlocutory revision having been allowed, the Board is concerned only with the second and third conditions. Clearly, the second condition must be satisfied before the third condition needs to be considered.

[3] The Board notes that the appellant does not allege a substantial procedural violation as such but only argues that the appeal fee should be reimbursed because the information put forward in its grounds of appeal - namely, the examples in the first priority document - was evident from the file.

[4] While that information certainly was on file, and while the ED would no doubt have ascertained that information if it had, at the time of making its decision, had occasion to re-read the priority document, the Board cannot accept that not taking that step amounted to a substantial procedural violation. The mere presence of information somewhere in the file does not relieve a party of its duty to draw attention to it when necessary or to present arguments relying on such information at the appropriate time (see R 2/08 [8.5,9.10]). That did not happen in the present case.

[5] When the ED in its communication of 4 September 2009 expressed its view as to the absence of any substantiation that the technical problem had been solved […], the appellant did not refer in its reply of 12 April 2010 to the examples in the first priority document which it later mentioned for the first time in its grounds of appeal. That response to the communication would however have been the appropriate time to have done so since, as the allowance of interlocutory revision clearly suggests, it might have resulted in a decision in the appellant’s favour and avoided the need for an appeal. Instead the appellant presented an argument based on the tables at pages 43 to 49 of the application as filed which the ED did not find convincing.

[6] It is therefore clear that the need to pay the appeal fee arose not from any failure on the part of the ED but from the manner in which the appellant chose to conduct its case. In the circumstances the Board finds there was no substantial procedural violation. Therefore the question whether reimbursement of the appeal fee would be equitable does not arise. The request for such reimbursement must be refused.

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The file wrapper can be found here.

T 317/11 – Inquisitor Me Impune Lacessit

This is an appeal against the refusal of an application by the Examining Division (ED).

Together with the statement of grounds as filed on August 6, 2010, a set of amended claims was filed.

On January 31, 2011, the ED instructed the formalities officer that it would not rectify the decision under appeal and that the case should be referred to the board of appeal.

[1.1] The decision to refuse was preceded by a communication of the ED issued on 6 May 2009 in which inter alia objections of added subject-matter (A 123(2) […]) against claim 2 and of lack of inventive step (A 56 EPC […]) against claim 1 were raised. [… T]he ED further argued that

“The expression […] “man or machine” discloses two alternatives. The lack of inventive step described above concerns the alternative where the B-replier is a man. But the lack of inventive step of one of both alternatives results in lack of inventive step of the claim 1”.

In the same communication the ED proposed an amended claim 1 which in its view would overcome the objections on file […]. From this proposal it is clear that the ED considered the claimed method as involving an inventive step if the authorized party was “a machine called B-replier” whereas it considered the method as lacking an inventive step if the method encompassed the possibility that the authorized party was a “man called B-replier”.

[1.2] A new set of claims was filed on 8 August 2009. The ED then refused the application, taking the view that the objections raised in the communication were not met by the amended claims.

[1.3] Claim 1 as filed together with the statement of grounds corresponds to the claim which the ED stated in its communication of 6 May 2009 would overcome the objections it had raised. In the reasons of the impugned decision […] the ED explicitly described the proposed claim as “patentable subject-matter”.

Furthermore, claims 2 and 12, said by the ED to contain added subject-matter, have been deleted from the present set of claims.

Hence, the objections which led to refusal of the application have been overcome by amendment. Consequently, the appeal is well founded.

[1.4] According to the established case law of the boards of appeal (see e.g. T 139/87; T 2140/09) the case ought therefore to have been rectified by the department of first instance pursuant to A 109(1). The ED did not however grant interlocutory revision, the reason for the apparent change of mind of the ED remaining unclear to the board. Under these circumstances the board considers that the case should be remitted to the ED for further prosecution in accordance with A 111(1).

The request for reimbursement of the appeal fee

[2.1] Pursuant to R 103(1)(a) the appeal fee shall be reimbursed in the event of interlocutory revision or where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation.

[2.2] The board infers from the statement of grounds of appeal […] that by refusing the application at this stage of the procedure the appellant (applicant) was taken by surprise so that the refusal constituted a substantial procedural violation.

[2.3] The grounds for refusal as given in the reasons of the impugned decision substantially correspond to the objections as discussed above […].

[2.4] It follows that the decision to refuse the application was based solely on grounds communicated to the applicant in the ED’s communication and on which the applicant had an opportunity to comment (A 113(1)). Whether or not in the present case a further communication should have been issued by the ED instead of an immediate refusal was a matter for the discretion of the ED. Accordingly, the grounds for refusal do not give rise to a procedural violation.

[2.5] Furthermore no sanction is provided in the EPC in the event of failure to forward the case to the board of appeal within the three month time limit as required by A 109(2); therefore the fact that the ED had delayed the remittal of the appeal to the board of appeal by more than five months from receipt of the statement of grounds in contravention of A 109(2) entails no legal consequence.

[2.6] Even if this delay may be considered a procedural violation there is no causal link between the reasons of the impugned decision and this deficiency. Accordingly this procedural violation is not “substantial” in the sense of R 103(2).

[2.7] It follows from all these reasons above, that the board sees no substantial procedural violation in view of which reimbursement would be equitable.

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T 1973/09 – Ultra Vires

On January 7, 2005, the Examining Division (ED) decided to refuse the European application under consideration because it considered that the subject-matter of claim 1 lacked an inventive step. 

The applicant filed an appeal against that decision, together with amended claims. 

The Board (decision T 697/05) considered it appropriate to remit the case to the ED so as to give the appellant the possibility to argue its case before two instances.

On May 8, 2009, the ED refused the application again, for lack of inventive step and lack of clarity. This time the applicant did not file an appeal in time but filed a request for re-establishment on August 26, 2009.

The professional representative of the applicant pointed out that the applicant had taken all due care by issuing instructions in good time (on June 5, 2009). He then explained the circumstances of the appeal:

On September 8, 2009, the representative filed a copy of the relevant fax transmission report:

On September 23, 2009, the formalities officer of the ED sent a written decision allowing the request for re-establishment. The ED then decided not to rectify its decision and transmitted the case to the Board of appeal.

The Board did not like the way in which the request for re-establishment had been handled:

Request for re-establishment of rights (A 122)

[1.1] By its decision dated 23 September 2009, the formalities officer acting on behalf of the ED allowed the applicant's request for re-establishment of rights dated 25 August 2009. This decision had the effect that the notice of appeal was deemed to have been filed in due time and the proceedings were continued.

[1.2] Under R 136(4), the department competent to decide on a request for re-establishment of rights is the department competent to decide on the omitted act.

[1.3] In the present case the omitted act is the filing of the notice of appeal, which is to be carried out within the time limit defined under A 108. The department competent to decide whether the appeal is inadmissible for non-compliance with A 108 is, under R 101(1), the Board of Appeal.

Therefore only the Board of Appeal is entitled to decide upon the request for re-establishment of rights.

[1.4] A 109(1), which empowers the department of first instance in ex parte proceedings to set aside its own decision if it considers an appeal to be “admissible and well founded” (emphasis added by the Board), provides an exception to the principle of general devolutive effect of the appeal, in order to allow an interlocutory revision. This exception, as such, has to be construed narrowly in connection with the interlocutory revision, and not as a broader entitlement for the first instance to decide whether an appeal is admissible (T 473/91, T 808/03, and Case Law of the Boards, 6th. edition 2010, VI.E.3.1, page 495). This is reflected in the Guidelines for Examination (E-VIII, 2.2.7) which indicate that the request for re-establishment is only then to be considered by the competent department if interlocutory revision is to be granted, which in the present case it was not.

This exception is necessary since interlocutory revision requires that an appeal exists before a positive decision can be taken for the appellant to grant the interlocutory revision. When it considers the appeal to be well-founded, the department of first instance is required therefore to form an opinion as to the admissibility of the appeal. This does not infringe upon the power of the Boards of Appeal to decide upon the admissibility of appeals since it applies only to well-founded appeals which in the case that they are also considered by the department of first instance to be admissible never reach the Boards of Appeal. Since the department of first instance only takes positive decisions on admissibility of an appeal in the case of well-founded appeals the rights of the appellant, at least in so far as it has not requested the refund of the appeal fee, are preserved, since it achieves what it has requested without the necessity of going through a complete appeal procedure.

[1.5] The department of first instance, however, in the present case followed neither A 109(1) nor the Guidelines for Examination since it decided upon the request for re-establishment of rights to conclude that the appeal was admissible, but not well founded. The decision of the department of first instance was thus ultra-vires.

[1.6] Since the department of first instance was not empowered to take the decision that it did, the Board sets aside the decision of the department of first instance to allow the request for re-establishment of rights.

Admissibility of the appeal

[2.1] The Board has considered the fax transmission report submitted by the appellant with its letter of 8 September 2009 and concludes from this that the letter dated 29 June 2009 containing the notice of appeal in the present case was sent and received by the EPO on that same date.

[2.2] However, the Board notes that the facsimile number of the addressee of the fax (+49 089 2399 2528) is in fact the number of the Treasury and Accounts department of the EPO, i.e. it is not the facsimile number (+49 089 2399 4465) of the filing office of the EPO in Munich (Article 3 of the Decision of the President of the EPO dated 12 July 2007 concerning the filing of patent applications and other documents by facsimile, Special edition 3/2007 of OJ EPO, page 7, and point 3 of Notice from the EPO dated 12 July 2007 concerning the availability of the EPO filing offices, Special edition 3/2007 of OJ EPO, page 6).

[2.3] Should it have been established that the said notice of appeal was not duly filed at the EPO, the appellant could at least legitimately have expected to receive a corresponding warning from the EPO that its filing was deficient, i.e. that it was sent to the wrong fax number, because the deficiency was readily identifiable for the EPO. Since 20 days then remained for the appellant to file a notice of appeal at a correct EPO address, the Board is convinced that the appellant would have filed its already prepared notice of appeal again at the correct address, both in due time and in due form.

[2.4] Therefore, applying the established case law on the principle of protection of legitimate expectations, the Board deems that the notice of appeal was filed on 29 June 2009, i.e. in due time.

Since the order for payment of the appeal fee was part of the same letter dated 29 June 2009, the same applies to the payment order.

[2.5] Consequently, the Board deems the appeal to be admissible without any necessity to consider a re-establishment of rights.

Re-imbursement of the fee for re-establishment of rights

[3.1] In view of the above finding that the appeal was admissible without consideration of the request for re-establishment of rights, the request for re-establishment of rights has no more basis.

[3.2] Therefore, the Board orders the reimbursement of the corresponding fee already paid by the appellant.

The Board then dismissed the appeal on substantive grounds.

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T 2052/10 – You Got It

Applicants sometimes believe that interlocutory revision opens the right to having the appeal fee reimbursed. This assumption will often prove false.

Following the refusal of its patent application, the applicant filed an appeal, submitted amended claims and requested reimbursement of the appeal fee. The Examining Division (ED) granted interlocutory revision on the basis of the amended claims. The applicant then again requested reimbursement of the appeal fee:

“Fortunately, in the matter of the above mentioned European patent application, appeal proceedings could be avoided, as the competent EPO ED now accepts the application documents as amended, which had been filed on March 2, 2010.

Therefore, we request that the appeal fee be reimbursed to our deposit account n° … kept at the EPO”

(click to enlarge)

The ED did not grant this request, nor does the Board of appeal:

(NB : all legal provisions refer to the EPC 1973)

*** Translated from the German ***

[2] Reimbursement of the appeal fee is ordered when the situation is such that the law requires reimbursement (gesetzlicher Rückzahlungstatbestand) (see J 3/09 [4.3]) or when the appeal fee has been paid without legal justification (ohne Rechtsgrund).

[2.1] Pursuant to R 67 reimbursement of appeal fees shall be ordered in the event of interlocutory revision if the reimbursement is equitable by reason of a substantial procedural violation.

[2.1.1] In the present case, the applicant has neither asserted nor proven that a substantial procedural violation occurred during the examination proceedings.

[2.1.2] The Board cannot see any such substantial procedural violation, either.

The decision was taken on the basis of the version of the claims filed with its letter of August 8, 2008. This version had been submitted and agreed upon by the applicant (A 113(2)), the right to be heard was granted and no requests had been overlooked. Therefore, the request for reimbursement cannot be granted.

[2.2] Also, the reason for reimbursement mentioned by the applicant, i.e. that the appeal proceedings could be avoided […] is not valid, because this is not a situation where the EPC provides for reimbursement (Rückzahlungstatbestand).

[2.3] Moreover, in the present case, there is also a legal justification for the payment of the appeal fee.

[2.3.1] Claim 1 on which the decision of the ED to refuse the grant of a patent had been based was significantly amended by the addition of the features of dependent claims when the appeal was filed.

Interlocutory revision was granted pursuant to A 109(1), on the basis of this amended claim 1 after the appeal had been filed.

[2.3.2] Pursuant to A 109(1), interlocutory revision presupposes that the department of the first instance whose decision is contested considers the appeal to be admissible and well-founded (see G 3/03 [3.3]).

This presupposes that the appeal fee has been paid, as pursuant to A 108 an appeal is only deemed to have been filed after the fee for appeal has been paid.

[2.3.3] In the present case, the ED which granted interlocutory revision necessarily had to consider the appeal filed, admissible and allowable before it could grant interlocutory revision.

Thus the appeal fee, without which, as seen above, interlocutory revision would not have been possible, has not been paid without legal justification.

[2.4] As the EPC does not provide for reimbursement in situations other than [the situation referred to in] R 67 (see [2.1] above), the request for reimbursement cannot be granted.

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