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Monday, 10 August 2015

When does a fundamental deficiency not lead to remittal? Decision from the EPO Board of Appeal

Merpel can be a little unreasonable sometimes too
Established case law of the Boards of Appeal of the European Patent Office indicates that an unreasoned decision by a first instance department constitutes a substantial procedural violation (see T583/04, T1360/05, T1442/09, T180/10 for example), and typically the Board will remit the case back to that lower department.  However, Board 3.5.06 recently decided (T1929/12) that, whilst an unreasoned decision is fundamentally deficient, the reasoning of the examining division was clear from the file and they saw no reason why the case should be remitted.  A pragmatic approach or troubling practice change?

In this case, the examining division refused the application after finding that the amended claims related to an undisclosed combination of disclosed features.  This is evident from the minutes of the oral proceedings but not from the decision.  The Board concluded The decision under appeal does not identify specific features of then claim 1 which were considered, individually or in combination, to go beyond the application as originally filed. In this regard, the board therefore agrees with the appellant that the decision is insufficiently reasoned, Rule 111(2) EPC. This constitutes a fundamental deficiency within the meaning of Article 11 RPBA.”

Article 11 of the Rules and Procedure of the Boards of Appeal states that A Board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise”, and so the Board were within their rights not to remit the case if “special reasons” existed for doing otherwise.

The “special reasons” for not remitting the case back to the examining division were that “the minutes [of ED Oral Proceedings] enabled the board to understand the reasons for the decision sufficiently well for it to deal with it” and because “no purpose would be served by remitting the case to the examining division, which would most likely have stood by its opinion and eventually issued another, better reasoned decision to the same effect.”  The Board were not persuaded that the absence of reasons in the decision compromised the applicant’s ability to contest the decision under appeal because the minutes of the ED oral proceedings were of course available to the applicant.

The Board also noted that, since the application was rejected under Art.123(2) EPC and since the onus of proof is on the applicant when establishing that amendments do not add subject matter, the applicant simply had to prepare an explanation as to why the claimed subject matter was disclosed in the application as filed in preparing the appeal.  The precise reasons of the examining division were not essential in this task.   It is not clear whether, had the refusal been made citing grounds for which the burden of proof lies with the examiner (such as lack of novelty), the Board would have taken the same pragmatic approach to an unreasoned first instance decision; this moggy feels that an applicant’s ability to contest the decision under appeal may be prejudiced to a greater extent in this alternative scenario because countering the examiner’s reasoning would be a fundamental part of the appeal.

In addressing the substantive issues, the Board “tended to agree with the examining division” on the issue of added-matter, but “decided to leave open the question …[of compliance] with Article 123(2) EPC” because all requests were considered unclear (Art.84 EPC) to such an extent that it was not apparent that the alleged inventive effect was actually achieved.  The application was refused on appeal for lack of inventive step and lack of clarity.

This Kat would like to thank his colleague Tim Belcher for authorial assistance with this post.  


Anonymous said...

So, the Board decided to refuse on different grounds than the examining division? How is that possible. Isn't the BoA a second instance? How can the BoA take a decision which should correspond to the first instance?

I could agree with the decision not to remit the case to the first instance because the reasons for the refusal are clear from the examination procedure as a whole, but how can the second instance take a decision not considered by the first instance, withdrawing the applicant the right to a two instances decision procedure? Is this contemplated in the EPC?

Anonymous said...

Justright comments:
What do you expect from that board? The composition speaks for itself! Poor DG3 !

MaxDrei said...

If I have understood it right, what strikes me is the injustice.

Was it not like this? The Chairman of the Board pulls out of his hat a new objection. Without any warning, he suddenly announces at the Oral Hearing that none of the Applicant's Requests meets the EPC's requirement that the claims be "clear". So what was clear enough for everybody up to the Oral Hearing of the Appeal is suddenly unclear enough for the Board that it summarily dismisses all Requests, with no chance to remit the case back to the Exam Division to re-work the claim wording to make "clear" what was not "clear" enough for the Board.

And all this as a response to an Applicant who had, by judicious re-wording, overcome all the Art 123(2) problems. So it seems that re-wording to overcome problems with the mere wording of the claim are possible and can succeed. Would it not have been more fair, given the ambush of a new objection, this time under Art 84 EPC, to have allowed the case to be remitted?

But hey, there are Divisionals. And more can be filed. So that's OK then, isn't it?

I just find it a bit sad, that the point at which one has met the requirement under Art 84 that the claims be "clear" is not "clear" at all. I'm reminded of Humpty Dumpty:

"When I use a word,' Humpty Dumpty said in rather a scornful tone, 'it means just what I choose it to mean — neither more nor less."
"The question is," said Alice, "whether you can make words mean so many different things."
"The question is," said Humpty Dumpty, "which is to be master— that's all."

As we see from the quotation, what counts, when you (Alice) are arguing whether the requirements of Art 84 EPC are met, is not fairness, or who is right but simply who is "master", who (Humpty Dumpty) is in charge.

Cheer me up somebody. Explain to me where I got it wrong.

Darren Smyth said...

Dear Anon at 20:57:

Article 111(1) EPC, 2nd sentence, states that “The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.” Thus, in this case the Board was entitled to take any decision that the examining division could have made.

Case law indicates that cases will generally be remitted to the first instance if there are new grounds for objection or new prior art which is considered for the first time in appeal proceedings, so that the applicant is gets two instances (T273/84, T133/87, for example). A substantial procedural error by the first instance department will also often lead to remittal, but not always; if the applicant is not disadvantaged by a deficiency in the first instance decision and has an opportunity to present their arguments on appeal, remittance to the first instance is not necessary (see for example T515/05). In this case, the prior art over which the applicant failed to show an inventive step had been cited in the search report and so they had had ample opportunity to consider and address it.

Boards of Appeal generally operate bearing in mind procedural economy and legal certainty for third parties whilst ensuring that the applicant is fairly treated. Thus, where a Board feels that it can dispose of a case fairly and quickly, it can be expected that the case will not be remitted to the first instance.

Best wishes


Darren Smyth said...

Dear MaxDrei:

Thank you for your comment. It is not always clear just from the decision whether justice has been done to the applicant, but Tim and I believe that the procedure followed was probably not unfair in this case.

Throughout prosecution, D1 was cited in a novelty objection alongside Art.123(2) EPC objections. It is true that the clarity objection raised by the Board was “new” but, in context, it does not seem completely unreasonable.

After overcoming the Art.123(2) EPC objections, the applicant relied on two terms to distinguish D1. The alleged inventive effect related to obtaining information from a network-linked computer without requiring manual input by the user of that computer (a process that the applicant termed “direct querying”) in contrast to the prior art which required manual input (“indirect querying”).

When discussing the terms relied on by the applicant to distinguish D1, the Board concluded that they were “unable establish that the alleged effects of "direct querying" could be attributed to the claimed features. To the extent that the appellant argued these effects to be constitutive for the matter for which protection is sought, this renders claim 1 of all requests unclear, Article 84 EPC”. Thus, it does not seem that the particular wording of the claim was considered unclear per se, but that it was not clear that the inventive effect was achieved by the claimed features.

So, the clarity and inventive step objections were very closely linked. One might even argue that really the Art.84 EPC objection should not have been raised. The grounds for rejection used by the Board of Appeal all related to the applicant’s failure to show an inventive effect relative to D1, and D1 was the applicant’s own document which had been cited from the start of prosecution.

We don’t think it would have been surprising had the case been remitted to the examining division, but we are also not convinced that the Board has treated the applicant unfairly since they had ample opportunity to consider the prior art.

Best wishes


MaxDrei said...

Thanks for that Darren. That does cheer me up. What you write makes good sense. It reminds us how these various provisions the EPC has, on patentability, are inter-related. So, when the Division or Board take them sequentially, at Oral Proceedings, you might well survive till late in the day, finally going down on, say Art 56, when the "real" reason for failure was Art 84 all along.

You mention Tim. I see he was Gill Prize winner in 2012. Kudos to him and the firm that trained him.

Anonymous said...

To be fair, Article 84 can crop up with any objection to patentability:

"The claim is not clearly novel."
"The claim is not clearly inventive."

Old man said...

Justright's comment seems a trifle unkind (as well as opaque). Being neither a party nor a member of DG3, I think it is unfair to cast such a general slur on three members, particularly as Darren Smyth appears to conclude that the final decision was not itself unfair.

Old sad man from EPO said...

I fully endorse Darren's position.
There is no right for two instances on all issues. There is a lot of case law on this.
As soon as the points have been discussed during OP the right to be heard has been fully respected. This was manifestly the case.
In the present instance, I would even add that the Board was very wise not to decide on a substantial procedural violation which they should or could have done. In case of a substantial procedural violation, they would have had no choice but to remit.God knows which new decision would have been issued. Probably a grant, as this is the best way then to get read of the case. If it would be based on the claims in appeal, clarity would have been appalling, but could not have been challenged in opposition, see also G 3/14.
When one sees the appalling decision, it is not the Board who is to blame but the examining division. Such a decision should never have left the premises of EPO. It is even scandalous to issue such decisions. Moreover, had the file been send back, then the first member would have got new production points for the next final action, whatever this might have been.
Such bad decisions are the direct consequence of the production pressure on EPO's staff.
The Board has actually to be thanked for its action, and certainly not reprimanded. Comments in the style "poor DG3" bring only something to people like the president, who in any case considers that DG3 members are lazy. We should refrain from such sweeping unjustified statements.

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