The IPKat reported last June on a rather strange case in which an EPO examining division had refused an application on the grounds that prior art known to the inventor was not mentioned in the specification as-filed, contrary to Rule 42(1)(b) EPC. The applicant appealed this decision and had it quickly overturned in T 2321/08, without even the need for a hearing. The examiner then reluctantly agreed that he was bound by the decision (with certain caveats, which the prosecution file, available here, makes clear), and carried on with prosecution. The IPKat thought the matter would be laid to rest there, but he was wrong.
In a further decision from last month, just announced this week by the EPO, a different appeal board has decided, in T 1123/09, on the very same question of whether it is possible for an application to be void ab initio for failing to comply with Rule 42(1)(b). The IPKat was initially surprised at seeing this, as he thought the question had been settled. Digging further, however, he noticed that the same examining division had been behind both appeals, with both cases having been managed by the same examiner, and with the same applicant. It must, the IPKat then thought, have been a simple matter of the later decision of the examining division being made before the earlier appeal had been settled. This was indeed the case. However, as the prosecution file shows, this was not the whole story. T 2321/08 was dated 12 May 2009, and the examining division decided on 19 May 2009 not to rectify their decision, as they could have done under Article 109 EPC, but instead to have another go, possibly hoping for a different outcome the second time round. This, of course, proved to be unsuccessful.
The IPKat, who feels some sympathy for the applicant in these cases, wonders whether it is entirely fair for a single examining division to behave in this way, and if there is anything that can be done about it other than to rely on the (hopefully) more common sense approach of the Boards of Appeal.
Mr van Staveren Strikes Again
![Mr van Staveren Strikes Again]()
Reviewed by David Pearce
on
Friday, January 15, 2010
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According to file inspection, decision T 2321/08 was taken on 11.05.09, but dispatched to the applicant on 26.05.09.
ReplyDeleteThe decision not to rectify the other appeal was taken on 19.05.09. It seems rather likely that the Division at that point in time was not yet aware of the outcome of T 2321/08. Since normally appeal procedures take much longer than in T 2321/08, I don't think we can conclude anything from the fact that the Division was relatively quick to decide not to rectify.
Of course I can't exclude that the appeal board or DG3 informed the examiner before 19.05.09 or that there was any other way for the Division to find out that a decision had been taken or was imminent, but I believe the Division should get the benefit of the doubt with respect to their decision not to rectify.
The boards have no disciplinary authority over the examining division, but the president and her managers have. If the examiners continue to pursue their path without regard of the board's decisions, a complaint letter to the president seems appropriate.
ReplyDeleteWhat to be done about this behaviour (repeated substantial procedural violation) - well, the appeal fee is reimbursed to the proprietor, so it seems no-one has paid for the appeal, why not dock it from the examiner's salary?
ReplyDeleteIt's OK. The examiner has been promoted to being a Director!
ReplyDeleteI know this examiner. He always tries to find one not-so-well-working embodiment falling within the scope of the claim and then argues that 'all possible embodiments should make technical sense'. Extremely annoying.
ReplyDeleteFrom some of my cases with him I would say this Examiner's hobby seems to be finding obscure basis in the EPC for strange objections.
ReplyDelete