Friday, 8 August 2014

J 16/13 - Obviously erroneous formal order


How to determine a board's competence pursuant to Article 21(3) EPC when the formal order of an appealed decision is obviously erroneous to such an extent that it is essentially incomprehensible when compared with the reasons in the body of the decision?

This is an appeal against the decision of the Examining Division, posted on 5 October 2012, not allowing the request of the applicant, now appellant, that a wrongly filed description and claims be completely exchanged under Rule 139 EPC for those of the priority document.


According to the order of the decision found on page 1 of EPO Form 2916, entitled "Decision", the following was decided: "In the matter of European patent application No. 08167183.6 it is decided as follows: The request under Rule 139 EPC to exchange the wrongly filed description and claims cannot be allowed".

However, the decision was issued with a cover page, EPO Form 2007, with a different order, namely a refusal of the application. The decision also contained the signature page with the signatures of the members of the Examining Division, EPO Form 2048.2, which contained the order that the application was refused on the basis of Article 97(2) EPC. The refusal was also registered in the electronic file system of the EPO.

Notice of appeal was filed on 5 December 2012, and appeal fee was paid the same day. The statement setting out the grounds of appeal was filed on 21 January 2013. 

The appellant's main request was that the decision under appeal be set aside and that the correction of the specification under Rule 139 EPC and the filing of the correct one be allowed. 

Reasons for the Decision

1. The appeal is admissible.

Competence of the Legal Board of Appeal

2. On the face of the decision under appeal, the Examining Division decided that the application is refused on the basis of Article 97(2) EPC. This wording is found on the cover page (EPO Form 2048.2) containing the signatures of the members of the Examining Division. The attached EPO Form 2007 also contains the refusal as the formal order. However, in the body of the decision the order is worded differently: "The request under Rule 139 EPC to exchange the wrongly filed description and claims cannot be allowed." The reasoning of the decision is also consistent with this order, while apparently none of the reasons supports a refusal of the application under Article 97(2) EPC. The Board takes it that the order in the body of the decision is the correct one which reflects the genuine intention of the Examining Division. Thus the Board considers that the cover page with the refusal is merely a formal error, and that the decision only concerned refusal of the request for correction under Rule 139 EPC. In this situation the question arises whether the Board competent for deciding on the appeal under Article 21(3) EPC should be chosen according to the (erroneous) formal legal effect as derivable from the cover page or the Register, or rather according to the intended (factual) legal effect as derivable from the body of the decision, in particular its reasons and other statements it contains.

3. The Board is aware of decision T 1382/08 of 30 March 2009, in which under comparable circumstances a Technical Board of Appeal found that it was competent to decide an appeal filed against a decision on a request under Rule 46(2) EPC 1973 (refund of further search fees). (It is noted that this decision preceded decision G 1/11 of 19 March 2014 of the Enlarged Board of Appeal, deciding that for appeals concerning such requests, when not part of a grant/refusal, a Technical Board of Appeal is competent). The deciding Board in case T 1382/08 derived the competence of a Technical Board under Article 21(3)(a) EPC 1973 from the formal legal effect of the decision (refusal), in spite of the fact that it was obviously erroneous, as in the present case. Furthermore, also as in the present case, the refusal was entered in the European Patent Register. The deciding Board held that the legal effect of the decision as apparent towards the public was decisive for determining the Board competent pursuant to Article 21(3) EPC 1973 (corresponding to Article 21(3) EPC), see point 1.3 of the Reasons.

4. The present Board does not follow this formal approach, which has certain disadvantages. First of all, such a situation would, in theory, in all likelihood lead to a remittal to the department of first instance on the basis of a substantial procedural violation, on the grounds of missing or contradictory reasons. Simply ignoring the wrong formal order of the appealed decision is not an option, because a possible dismissal of the appeal (on the underlying substantive issue) will make this wrong formal decision final (and as such essentially incurable). Remittal causes significant delay to the proceedings, without seeming to provide any satisfactory legal relief to the appellant. This route was also chosen by decision T 1382/08. Alternatively, a "formally competent" Board taking up the case may choose to decide the case on the merits, but this leads to the rather unsatisfactory situation that the case is decided on its merits by a Board which in fact is not competent, given the legislative intent behind Article 21(3) EPC. This can be particularly problematic if in this manner the Legal Board rather than a Technical Board decides a case on technical issues (see also G 1/11, point 10 of the Reasons).

5. These disadvantages are also apparent here. A transfer of the case to a Technical Board for the sole purpose of setting the decision under appeal aside, e.g. on the basis of a substantial procedural violation, and remitting the case for correction of the decision does not seem equitable towards the appellant, to whom the error of the Examining Division cannot be imputed. However, this is not necessary. In its decision G 1/11, the Enlarged Board of Appeal found that where in the regulation of the competences between the Technical Boards and the Legal Board a lacuna in the law is discernible, the substantive matters to be decided on should be guiding when assigning the case to the appropriate Board (point 13 of the Reasons). The Enlarged Board of appeal concluded that a lacuna in Article 21(3) EPC existed, in the sense that it could not be established if the legislator had indeed considered the special and apparently contradictory constellation of the substantive issues (unity of the application, a technical question) and the competent Board (the Legal Board) which would have followed from a "blind" application of Article 21(3)(c) EPC. The Enlarged Board of Appeal held in decision G 1/11 that in this situation the substantive issues and procedural economy should be decisive, which clearly pointed to the competence of the Technical Board.

6. The Board holds that the same considerations are applicable here. It can be safely presumed that the legislator did not intend - it could not have seriously intended - to rely on the competence rules of Article 21(3) EPC in those rare and practically unforeseeable procedural situations where a decision is issued with an obviously erroneous and on an objective view, "impossible" order. This is the case where the formal order of the appealed decision is essentially incomprehensible when compared with the reasons in the body of the decision, in particular when it plainly does not correspond to any of the foreseen possible legal effects flowing from the substantive issue underlying the appealed decision. The present Board holds that in such situations, if the competence is supposed to change from one Board to another only because of the "impossible" order, the order can be disregarded for the purposes of Article 21(3)(a) and (c) EPC, and rather the substantive request underlying the decision must be guiding. In the present case this request concerns the allowability of the correction under Rule 139 EPC in combination with the priority document, as explained in detail in points VIII and XVI-XVII above, an issue that quite obviously does not fall under Article 21(3)(a) EPC. Accordingly, the Board is satisfied that it is competent to decide on the case pursuant to Article 21(3)(c) EPC.

Exchange of application documents under Rule 139 EPC ("Main request")
7. The Examining Division based its decision firstly on the argument that the proposed replacement was not evident because it was not clear if the description or rather the drawings were erroneous. As a second independent argument, the Examining Division held that an exchange of the documents would bring in new subject-matter, contrary to Article 123(2) EPC. The general statement in the application pointing to the priority document and other documents of the applicant could not be relied on, as these were not available to the public or the EPO on the date of filing the present application. The Board concurs with the substantive conclusions of the Examining Division, though partly with somewhat different reasoning concerning compliance with Article 123(2) EPC.
(...)

Extension of the time limit for filing missing parts under Rule 56(3) EPC ("first auxiliary request")
Admissibility of the request
21. This request was first submitted in the grounds of appeal, and no decision was made on it by the Examining Division. However, the Board considers that this request and the submitted grounds in support of the request are closely related to the substance of the appellant's original request, namely the request for correction under Rule 139 EPC. Concerning their substantive effects, both requests have the same purpose, namely the replacement of the "wrong" description/claims with the correct ones. Furthermore, the auxiliary request concerns a rather extraordinary, essentially unforeseen procedural possibility, based on the violation of legitimate expectations, another extraordinary circumstance. Thus it appears justified to consider this request not as a request directed at a separate and independent procedure within the grant proceedings, but rather as ancillary to the disputed issue of the correction under Rule 139 EPC. The relevant facts are all on file and require no further enquiries. Therefore, the Board considers it expedient to deal with the request and admits it under Articles 12(2) and 12(4) RPBA.
Allowability of the request
22. Rule 56(3) EPC permits the later filing of missing parts under certain conditions. One condition is that the missing parts must be filed within one of the two possible time limits under Rule 56(2) EPC. Only one of these time limits is applicable, the other one being a fixed time limit (within two months of the date of filing) set by Rule 56(2), first sentence, EPC and which has already expired. Thus the setting of a time limit under Rule 56(3) EPC as requested by the appellant must implicitly rely on the other time limit of Rule 56(2) EPC, namely the time limit set by an invitation to file missing parts pursuant to Rule 56(1) EPC. Such an invitation was not issued by the EPO, but the appellant submits that it ought to have been issued as a question of good faith (or legitimate expectation). Quite apart from the fact that the omission of such a communication in the present case did not in any way violate the appellant's legitimate expectations (see below), Rule 56(1), second sentence, EPC is quite clear: "The applicant may not invoke the omission of such a communication". This means that the applicant alone is responsible for filing the correct documents and thus remains responsible for any loss of rights which may have been caused by the filing of wrong application documents. On this basis alone, the "good faith" argument of the appellant cannot succeed.
23. The Board does not examine in depth under which further conditions, e.g. until which stage of the grant procedure, is it possible for the EPO to issue an invitation to file missing parts under Rule 56(1) EPC. The Board notes that according to the Guidelines "it is not permissible [to rely on it] at later stages of the procedure", see Part H, Chapter IV.2.3.2, but otherwise it is not explained when the "later stages of the procedure" commence. The wording of the rule nevertheless implies that this possibility is limited to the examination of the European patent application under Article 90(1) EPC, i.e. the examination on filing under Rule 55 EPC, concerning the requirements for according a filing date. Arguably, the issuance of the invitation under Rule 56(1) EPC is no longer possible once the examination under Article 90(1) and Rule 55 EPC has been completed by the Receiving Section, and this is clearly the case here, implied by the fact that the case has been transferred from the Receiving Section to the Search Division.
24. Furthermore, reference is made to decision J 27/10 of 9 December 2010, which held that "missing parts of the description" in Rule 56 EPC must mean a genuine part (fraction) of an originally filed description, so that this rule cannot serve as a basis for substituting a complete (or even partial) description, see points 11, 12 and 18 of the Reasons.
25. As to the substance of the "protection of legitimate expectations" argument, it is not apparent to the Board that the EPO made any error. As explained above, the examination of application documents for identifying any missing parts under Rule 56(1) EPC is part of the examination under Article 90(1) EPC, the purpose of which is to establish if a filing date can be accorded. Though it is implicit in this rule that the Receiving Section should check if any parts are missing, this can only be done by comparison with the request for grant, which specifically lists the items filed. However, at this stage the Receiving Section does not (and normally cannot) check the technical contents of the application. In particular, it is under no obligation to check whether the reference signs in the abstract correspond to those found in the drawings which are to be published together with the abstract. The Board can accept that it might have been obvious for a formalities officer in the Receiving Section to discover this fact, provided he was consciously looking for concordance between the abstract and the corresponding Fig. 1. This may even be possible without a formal technical qualification. However, the point is that the Formalities Officer simply did not have any obligation to make this check during the examination under Rules 55 and 56 EPC.
26. It is true that the Guidelines instruct formalities officers to notify the applicant under Rule 58 EPC that the abstract does not belong to the application, as part of the procedure under Article 90(3) and Rule 57(d) EPC (see Guidelines, A-III 10.2, also A-III 16.2). However, the primary instruction to formalities staff is that beyond checking the existence of the abstract, its content is normally checked by the Search Division. Only when it is obvious that the abstract does not belong to the application should this be brought to the attention of the applicant. There are no particular instructions in the Guidelines that the reference numerals must be checked. Otherwise there was no indicataion here that the abstract as filed was wrong in any way: it referred to an existing figure (Fig. 1), and had the same title as the description (Display apparatus and control method thereof). The drawings contained figures that were perfectly consistent with such types of inventions (block diagrams and flowcharts). In short, on an objective view, there was nothing in the file that could have established a reasonable, let alone a legitimate expectation that the abstract would be identified by the Formalities Officer as "obviously not belonging to the application".
27. Further arguments by the appellant that it had not been notified of the error in time and therefore could not take certain steps, such as withdrawing the application before publication or requesting re-establishment of rights in the time limit of Rule 56(3) EPC (see points 2.25-26 of the grounds of appeal), are apparently unfounded. According to the file, the extended European search report was issued on 6 February 2009, i.e. approximately four and a half months after the filing date, but still more than three months before publication. The report included the European search opinion (Rule 62 EPC). The search opinion explicitly stated that "the figures presently on file do not seem to correspond to the disclosure and the claims", see page 2, point 2. Against this background, it remains unexplained why the appellant itself was unable to identify the error earlier than the stated date of 19 January 2010. Under such circumstances, any re-establishment in respect of the time limit of Rule 56 EPC under Article 122 EPC seems hardly possible, quite apart from the other procedural issues that such a request for re-establishment would inevitably raise.
28. The fact that the Search Division approved the abstract pursuant to Rule 66 EPC in the communication issued together with the search report and opinion (see point V above) cannot be objected to. The abstract apparently did correspond to the description. The fact that the figures did not correspond to the description was properly identified by the Search Examiner. It is not apparent what further duty to warn the applicant the EPO might have had at that stage of the proceedings. On this basis, the arguments of the appellant as listed in points 2.21 to 2.31 of the Grounds are apparently without merit. It has simply not been shown that the EPO did not fulfil its obligations in handling the present case.
Further procedure

29. The apparent formal decision to refuse the patent application is obviously wrong. The Board has explained above that remittal to the Examining Division on the basis of a substantial procedural violation would have caused significant delay. A similar delay would be likely if the Board remitted the case to the Examining Division simply with the order to examine if a correction under Rule 140 EPC would be appropriate. Thus the Board decides, also in view of Article 11 RPBA, last passage, to set aside the decision under appeal with the order to continue the proceedings, but the Board refuses the request under Rule 139 EPC that the application documents be exchanged, as well as the request that a time limit under Rule 56(3) EPC be granted. This appears to the Board the most expedient way of preventing the formally wrong decision (refusal of the application under Article 97(2) EPC) from having any substantive legal effect, particularly in view of the fact that dismissing the appeal would immediately make this formally wrong decision final.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

(...)

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

Catchwords
Where the formal order of an appealed decision is obviously erroneous to such an extent that it is essentially incomprehensible when compared with the reasons in the body of the decision, in particular when it plainly does not correspond to any of the foreseen possible legal effects flowing from the substantive issue underlying the appealed decision, and if the competence pursuant to Article 21(3) EPC is supposed to change from one Board to another only because of such an "impossible" order, the formal order can be disregarded for the purposes of Article 21(3)(a) and (c) EPC, and rather the substantive request underlying the decision must be guiding in determining the Board competent to decide the case, see point 6 of the Reasons. (T 1382/08 not followed).

This decision has European Case Law Identifier: ECLI:EP:BA:2014:J001613.20140522. The whole decision can be found here. The file wrapper can be found here.

Photo from freedigitalphotos.net.

Note: blog updated with inclusion of reasons 7 and 21-28 on 30 June 2015.

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