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.