Tuesday, 29 July 2014

T 2231/09 - Communication not an act of the examining division?

Is a communication issued using Form 2001A an act of the examining division pertaining to the examination in accordance with Article 94(3) EPC? We revisit J 9/10.

The applicant appealed against the decision refusing European patent application No. 05254923.5, published as EP 1 640 913 A1.

The examining division had refused the application on the grounds that the subject-matter of the claims lacked novelty or did not involve an inventive step over the prior art.

In the appeal, the appellant essentially argued that the first-instance proceedings were tainted by substantial procedural violations because the examining division had not issued a formally correct communication under Article 94(3) EPC in view of the case law created by decision J 9/10.

In the present case, the communication was issued using Form 2001A. The appelant cited, amongst others, J 9/10 according to which a form 2001A is not an act of the Examining Division.

Background: between 2005 and 2012, communications were issued on EPO Form 2001A in cases in which the applicant had not responded to a negative search opinion drawn up before 1 April 2010. Although J 9/10 dealt with the request for refund of the examination fee, its decision prompted the EPO to issue a notice (OJ EPO 2013, 16) on the time limit for filing voluntary divisionals.

Reasons for the Decision

1. The appeal is admissible.

2. Remittal to the department of first instance

2.1 Pursuant to Article 11 of the Rules of Procedure of the Boards of Appeal ("RPBA"; see OJ EPO 2007, 537) "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." The board considers that the term "fundamental deficiencies" referred to in this article and the notion "substantial procedural violation" in Rule 67 EPC 1973, first sentence (now Rule 103(1)(a) EPC) are synonymous (see the German versions of the two provisions where the terms are virtually identical: "wenn das Verfahren ... wesentliche Mängel aufweist" and "wesentlicher Verfahrensmangel", respectively).

The appellant asserted that the proceedings before the examining division were tainted by substantial procedural violations because, in view of the case law created by decision J 9/10, the examining division had failed to issue a formally correct communication under Article 94(3) EPC. Furthermore, the search opinion was very short, and the objections raised by the examining division were not sufficiently clear and inadequate to enable the representative to discuss the issues with the applicant. This meant that the right to a fair hearing had been denied.

2.2 In decision J 9/10 (see point 2.4 of the Reasons) the legal board had to decide in particular what kind of act or acts amounted to the beginning of substantive examination. In this context the board held that a communication using EPO Form 2001A which was attributable only to the formalities officer did not constitute an act of the examining division pertaining to the examination in accordance with Article 94(3) EPC. Such a communication could thus not be regarded as the beginning of "substantive examination" pursuant to Article 10b(b) of the Rules relating to Fees 1973 (see point 2.9 of the Reasons). The board also held in point 3.2 of the Reasons that the formalities officer's error of judgment did not constitute a substantial procedural violation.

2.3 In the present case, the communication dated 21 September 2006 was issued by the EPO using EPO Form 2001A. The applicant replied to it, addressing the objections made in the earlier European search opinion (essentially lack of conciseness, novelty and inventive step). In the board's view, this search opinion may have been concise, but was not too short for the skilled reader to understand the objections. Subsequently, the applicant also replied to the objections raised in the summons to oral proceedings. The applicant thus obviously regarded the two official communications as invitations by the examining division to file observations and amend the application. This sequence of events reveals that the representative was in a position to discuss the issues with the applicant after the communication of 21 September 2006 was issued, and to draw up pertinent replies. Furthermore, the applicant chose not to attend the oral proceedings, in which the examining division eventually refused the application. There is thus no indication of insufficiently clear or inadequate examination proceedings infringing the applicant's right to be heard.

2.4 Lastly, the appellant did not complain that its right to be heard had been infringed in the examination proceedings in any other way. The board too sees no such violation, or any other indication of a fundamental deficiency in those proceedings, which would justify remittal (Article 11 RPBA).

2.5 Nor is remittal to be ordered due to the fact that the primary examiner may not have authenticated the communication using EPO Form 2001A. That may run counter to the findings in J 9/10, which have been summarised above. Yet, as explained, the board has been unable to discern any indication of an insufficiently clear or an inadequate examination starting de facto with the communication using EPO Form 2001A. As a consequence, there would be no causal link between any authentication of the communication using EPO Form 2001A by the formalities officer instead of the primary examiner and the applicant's need to file an appeal. In the absence of such a causal link, remittal under Article 11 RPBA is not appropriate, in analogy to what has been held in the context of the reimbursement of the appeal fee due to a substantial procedural violation (see J 9/10, point 3.1 and the decision cited there).

The board also agrees with J 9/10 (at point 3.2) in that, even if the sole ground of appeal had been the fact that the communication using EPO Form 2001A may have been authenticated not by the primary examiner but by the formalities officer, that would not constitute a procedural violation or fundamental deficiency, but an error of judgment on the part of the formalities officer.

2.6 As a consequence, the request for remittal to the first instance because of fundamental deficiencies in the first-instance proceedings has to be refused.



For these reasons it is decided that:

The appeal is dismissed.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T223109.20140423 . The whole decision can be found here. The file wrapper can be found here.

1 comment :

  1. I don't think the board's reading of point 3.2 of J 9/10 is correct.

    The situation in J 9/10 is quite different. In that case, the applicant withdrew the application and requested reimbursement of the examination fee. The formalities officer refused this request because he considered that examination had started with the dispatch of Form 2001A. The board in J 9/10 considered that the dispatch of Form 2001A had had no legal effect, and concluded from this that examination had not started. The appeal was therefore allowed and the examination fee reimbursed.

    The remaining question was whether the appeal fee should also be reimbursed. The board in J 9/10 said no, because the formalities officer deciding on the request for reimbursement had not committed a procedural violation, but had merely made an error of judgement. The erroneous judgement was the judgement that the dispatch of Form 2001A qualified as the start of examination ("the formalities officer's conclusion regarding the legal effectiveness of the communication of 28 May 2009").

    In the present case, it follows from J 9/10 that the procedure leading to the refusal of the application was tainted by a procedural defect: the first and only communication under Art. 94(3) was not legally effective. One can still argue whether this amounts to a "substantial" procedural violation (did it make the proceedings as a whole unfair or did the applicant all in all get a fair enough treatment?), but there is no denying that this procedural defect is a procedural violation.

    Whether the formalities officer is somehow at fault for dispatching Form 2001A is irrelevant (I suppose he just followed his instructions). Acting ultra vires is by its very nature a procedural defect = procedural violation. This has nothing to do with errors of judgement. See e.g. J 32/95, point 4.1, par. 3 and 4.