A recent decision from the Boards of Appeal considered when a first instance department should reconsider a decision before sending an appeal to the Boards of Appeal (interlocutory revision) (T 682/22). The decision highlights the self-contradictory stipulations in the Guidelines for Examination on interlocutory revision. Parts of the Guidelines also contradict the established case law. The Board of Appeal chose to follow the established case law as opposed to the Guidelines.
Case Background
T 682/22 related to an appeal the decision of the Examining division to refuse the application EP3133864 for lacking novelty. On appeal, the applicant amended the claims to subject matter that the Examining Division had previously indicated as being novel. The key question before the Board of Appeal was therefore whether the Examining Division should have granted interlocutory revision as opposed to sending the case to the Boards of Appeal.
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| Unimpressed by contradictions in the Guidelines |
Contradictions in the Guidelines
The Board of Appeal in the case noted contradictions in the Guidelines for Examination on when interlocutory revision is applicable. The Guidelines indicate that interlocutory revision should apply when an appeal is "well-founded", including in cases where the claims of the main request clearly overcome the Examining Division's grounds for refusal (E-XII, 7.1). The Guidelines also confirm that this principle applies even in cases where the claim amendments of the Main Request give rise to new objections (E-XII, 7.2.).
The Guidelines indicate elsewhere, however, that an appeal should be sent to the Boards of Appeal in cases where amendments add matter, regardless of whether the grounds of refusal are overcome (E-XII, 7.4.2). The Guidelines further stipulate that, in arriving at a decision on interlocutory revision, the Examining Division should take account of all the grounds or rejection referenced in the refusal decision (E-XII, 7.2), including those that had previously been overcome by the applicant. Both of these stipulations contradict the overarching principle that interlocutory revision should be granted if the grounds of refusal are overcome in the statement of grounds of appeal.
Contradictions in the Case Law
The Board of Appeal in T 682/22 cited the previous case law that interlocutory revision should be granted if the grounds of refusal are overcome, regardless of whether new objections arise (T 139/87, T 691/18 and T 1060/13). The Board of Appeal also noted, however, the contradictory decision T 2445/11. In T 2445/11 the Board of Appeal found the approach adopted by previous Boards to be "too rigid, [leaving] no room for a pragmatic assessment of the situation with a view to procedural efficiency".
The Board of Appeal nonetheless found the reasoning of T 2445/11 unconvincing: "The fact that the first-instance proceedings must be "repeated" is a consequence of the very fact that the examining division decided to refuse an application on specific grounds - and not on others - and that these specific grounds are overcome with the appeal. In such a situation and in line with the established case law, Article 109(1) EPC obliges the examining division to rectify its decision and continue examination of the application."
The Board of Appeal thus found, in line with the established case law but in contradiction to some sections of the Guidelines, that the Examining Division in the case in question should have granted interlocutory revision (but "for whatever reason, they did not do so" (r. 2.4.7)). The case was therefore remitted directly back to the Examining Division.
The decision in T 2445/11 is thus a timely reminder that the Guidelines are just that, Guidelines. The Boards of Appeal have the right to follow the case law and their own interpretation of the EPC.
Reviewed by Rose Hughes
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Tuesday, August 16, 2022
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Well the question is: if clear and detailed instructions for examiners in the EPO Guidelines do not reflect only the established case law of the Boards, what do they additionally reflect? Where do those instructions (clearly in contradiction with the established case law or not having an indisputable basis in the established case law) come from? Or in other words: who is dictating the European patent law beyond (and even against) developments of the Boards jurisprudence through lower-range instructions theoretically not legally binding but in practice binding on examiners?
ReplyDeleteAs far as the relationship between case law and Guidelines is concerned, I invite you to look at the comment addressed to Max Drei under the following link.
Deletehttps://blog.ipappify.de/t-184-17-addendum-to-my-contribution-on-t-1042-18/#comment-131
In that post you touch upon a number of interesting points. The relationship between case law and Guidelines, as presently understood and used by EPO management, is precisely the problem. To put it clearly: for EPO management, the Guidelines is the law to be applied by examiners (first problem, examiners are not given guidelines but instructions, and the GL turn into a casuistry); for EPO management, changes to the law can be conveniently implemented by “updating” the GL, often politically driven e.g. by following certain T decisions but not others (second problem: the GL do not reflect anymore only the ESTABLISHED case law, but politically motivated developments which may very well be disputable, while they cannot be disputed, because the GL are the law). All in all, a complete confusion of the legislative and executive powers, and less and less relevance of the jurisprudence as the mechanism for making the law.
DeleteI understand your position, but I can only repeat that the only binding decisions for first instance divisions and for the boards are decisions of the EBA. This is the case law which has to be followed imperatively.
DeleteThere is no obligation under the EPC for the EPO (or the boards) to follow any T or J decision.
In this respect the EPO management is entitled to follow certain decisions and not others. Whether we like it or not, this is a matter of fact.
I have given some examples were the GL have been adapted or not to case law. In the case of the deletion of the purposive selection from N, it took the EPO a lot of decisions and a very long time to make this change in the GL.
As far as the "essentiality" test is concerned, the term "essential" has disappeared, but the three steps are still in the GL. There have been also quite a lot of decisions saying that the essentiality test is not to be used, but the steps are still there. Personally I find the test useful as a first screening when making amendments. That eventually the amendment has to abide by G 2/10 goes without saying.
When it comes to decide whether a mere request for OP in reply to a request for further processing is considered as accomplishment of the omitted act, there are two decisions saying yes: T 1382/04 and T 861/03. And yet the GL, VIII, 2, have not changed on this topic.
The question to me is actually what is to be understood as “established” case law.
Are two T or J decisions enough to consider that we are in presence of "established" case law? I would think not.
To my understanding the only “established” case law at the EPO is that of the EBA. There might be long lines of case law by the boards, but it is still debatable whether one can speak about “established” case law if such a long line of case law is not confirmed by a decision of the EBA.
As I explained in a comment to Max Drei, it took me a while, but I seem to have realised why IP specialists from over the Channel require abiding by case law also at the EPO.
To my humble opinion, it is the fact of having practiced in a common law environment. Common law is also known as judicial precedent, judge-made law, or case law.
Common law systems place great weight on court decisions, which are considered “law” with the same force of law as statutes.
To sum it up, all decisions in common law jurisdictions are precedent.
This is not the legal system for most of the EPC countries in which civil law prevails.
Civil law judges tend to give less weight to judicial precedent, which means that a civil law judge deciding a given case has more freedom to interpret the text of a statute independently.
This means that jurisprudence might change with time, but jurisprudence is not, or at least should not be, replacing the law.
If I am mistaken, please let me know.
I hope you will understand that, for obvious reasons, I do not wish to comment on the political aspects of what comes or not in the Guidelines.
The only exception I will allow myself is to say that the form of the OP, in-person, ViCo or mixed mode should be left to the parties and not imposed by the EPO. In-person should be the default standard outside a "general emergency" (what ever this might mean) impairing parties or their representative to come to the place where OP should be held.
Yes, one could agree that the “established” case law of the BA comprises the decisions of the EBA, but also a vast body of long lines of case law reflecting long-standing practice, as compiled in the White book.
DeleteTake, for example, the established common understanding on how a direct and unambiguous disclosure is to be judged as applying equally to the requirements of art.54, art.83, and art.123, followed in hundreds of decisions.
Of course, the GL cannot reproduce the entire body of case law in form of a collection of instructions to be applied to particular individual cases. This is for examining divisions to judge.
And here, I disagree with your view that EPO management is entitled to follow certain decisions, and not others.
According to the EPC, the examining division, not the EPO management, is entrusted with examination. Neither the GL can foresee instructions for each particular case, nor can the EPO management making a most doubtful use of the GL, favouring certain non-established and debatable directions, but not others, deprive examining divisions from their freedom of judgement to consider the entire body of case law and its applicability to each particular case.
A quality patent system needs basic guidelines for examination and independent examining divisions having a profound understanding of the patent law and the case law of the BA. The future envisaged by EPO management goes precisely in the opposite direction: guidelines in form of a more and more incomprehensible pre-cooked collection of instructions for isolated home-office examiners on 5-year contracts who do not have any global understanding of the patent system anymore.
With the Boards being strict on interpreting the RoP and refusing requests which could have been submitted at first instance, are the interlocutory revision procedures now essentially redundant? Are the examining divisions not also obliged to consider the new requests as if they were the Board?
ReplyDeleteThe interlocutory revision procedures are by no means “essentially redundant”. The purpose of those is manifestly to discharge the board from unnecessary redundant work ending up in remittal for further prosecution.
ReplyDeleteIf, when appealing the refusal, the applicant files a request allowing overcoming the objections raised, prejudicial revision has to be granted. Examination is then resumed and can end up rapidly with a grant, what is often the case. Any further previously filed AR would then not have to be examined. Depending on the situation, the ED might have to look at AR filed before the refusal.
If there is no request allowing prejudicial revision, then the file has to be sent to the boards.
Theoretically, if examination resumes, the ED has the discretion under R 137(3) not to admit any “new AR” filed when entering appeal. Such requests will be late filed for the ED. At least those requests will have been "considered" by the ED.
If the applicant is dissatisfied with the way the ED will have applied the discretion given to it, the applicant can then appeal the decision not to admit the new AR under R 137(3). But then there is a second appeal and again the possibility of prejudicial revision.
Those “new AR” will most probably not be admitted in appeal if the discretion has been correctly exercised. Not to forget: by virtue of R 137(3), an ED is not obliged to examine any request filed after the first communication.
Daniel, perhaps you can comment on the Decision featured today in the Just Patent Law de Fries blog, T0431/21. Link below. Here we see an ED getting reprimanded by the TBA for not giving due consideration to the AR's filed by Applicant and, instead, issuing a decision to refuse. On appeal, the TBA threw the case straight back downstairs, finding procedural violation.
DeleteCould it be that both the ED's and the Boards are looking for ways to get work off their respective desks and onto the desks of the other instance, so that each instance can meet management demands for increased "productivity". Where will this end, I wonder.
http://justpatentlaw.blogspot.com/2022/08/t-043121-discretion-under-rule-1373-epc.html
@DX Thomas Putting my point another way, because of the strict of the RoP, a representative may advise that filing an appeal with a new request not considered at first instance is very likely to result in a negative decision. Accordingly, the preferred route should be the filing of a divisional application for having the amended claims considered by the examining divison. It would be a brave applicant who relies on the examining division picking the papers up again.
DeleteFiling a divisional in order to avoid a late filing at the appeal stage is certainly a solution, as it also obviates a non-admissibility under R 137(3).
DeleteIt is mainly a question of costs for the applicant. If he can afford it, why not?
But interlocutory revision should be granted. If the board would systematically decide that not granting prejudicial revision is a substantial procedural violation, such a move would also help in convincing EDs to grant it.
Reimbursing the appeal fee is not automatic in case of a SPV.
But ping-pong between instances should be avoided at any rate.
Dear Max Drei,
ReplyDeleteT 431/21 did not escape my attention. I have drawn the attention to it to my contacts within the EPO.
In my comments I noted that the filing date is 02.12.2011. The Request for entry into the European phase was filed on 18.06.2013, but the SESR was only communicated to the applicant on 19.12.2017 that is four and a half years later.
The reply to the first communication of the ED was filed 06.11.2018 and summons to OP followed immediately.
My conclusion to my contacts:
It appears that the ED manifestly wanted to get read of the file which was a kind of submarine as quickly as possible once belated search and examination had started.
Production and productivity are important aspects, but not at such a cost.
I leave any further conclusion to you.