Friday, 1 January 2016

T 2411/13 - applicants response overlooked

In the decision to refuse, the Examining Division stated that the applicant had already been informed about failing the EPC requirements in an earlier communication. The Examining Division also stated that no comments had been filed in response to that earlier communication. The latter statement was however not correct: the applicant has filed a letter with arguments. The Board decided it an infringement of the right to be heard, resulting in an insufficiently reasoned decision, and a substantial procedural violation.

Summary of Facts and Submissions
I. The appellant (applicant) lodged an appeal against the decision of the Examining Division refusing the European patent application 02781000.1 which was dispatched on 7 June 2013. The Examining Division stated that the applicant had been informed in the communication dated 2 May 2012 that the application did not meet the requirements of the EPC. The Examining Division stated furthermore that no comments had been filed in reply to the communication of 2 May 2012.
The notice of appeal and the statement setting out the grounds of appeal were filed within the relevant time limits.
II. The appellant requested that the decision be set aside and a patent granted on the basis of the claim 1 on file.
V. The appellant argued essentially that:
i) Inventive step
ii) Right to be heard
The statement of the Examining Division according to which no comments had been filed was incorrect. The applicant had indeed filed comments in the letter dated 12 December 2012 and these were not referred to in the decision under appeal. The comments contained in this letter had therefore not been considered by the Examining Division in reaching its decision.
Reasons for the Decision
1. Inventive step
1.1 D7 is the most relevant prior art and discloses the features of the preamble of claim 1.
1.2 The problem to be solved is to provide a transmission with an increased range of output speeds or torques.
1.3 Documents D9-D13 disclose arrangements which comprise the characterising features of claim 1, i.e. features (k) to (m), see for example D9, fig. 1. However, the claimed solution to this problem is not made obvious by these documents because D7 already provides an extended range, see col. 3, lines 6-7. The skilled person would therefore lack the motivation to add a further overdrive unit, such as disclosed in D9-D13, to the transmission of D7. Moreover, the skilled person would recognise that to do so would further complicate an already complicated arrangement and therefore would be dissuaded from doing so.
1.4 Furthermore none of the documents D9-D13 are directed to problems that would arise in the continuously variable transmission disclosed in D7.
1.5 Given the above, the person skilled in the art would not have had any motivation to combine the teachings of D7 and D9-D13 in order to solve the above problem. The subject-matter of claim 1 therefore involves an inventive step in the sense of Article 56 EPC.
2. Right to be heard
2.1 It is clear that the statement of the Examining Division in the appealed decision that no comments had been filed by the appellant in reply to the last communication is not correct and clearly indicates that the Examining Division did not consider the appellant's arguments filed with the last reply of 12 December 2012.
2.2 Consistent case law of the boards of appeal, see Case Law of the Boards of Appeal, 7th Edition, 2013, Chapter 1.1.1, 1st paragraph, shows that a failure to address in the contested decision the disputed points amounts to an infringement of the right to be heard (Article 113(1) EPC). The arguments contained in the letter of 12 December 2012 should have been taken into account and the failure to do so means that the decision is not sufficiently reasoned as required by Rule 111(2) EPC.
2.3 This constitutes a substantial procedural violation, furthermore as this procedural violation has led to the filing of the appeal then reimbursement of the appeal fee is equitable. The appeal is moreover allowable so that the requirements of Rule 103(1)(a) EPC are met.
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the Examining Division with the order to grant a patent in the following version:
3. The appeal fee is reimbursed.

This decision T 2411/13 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2015:T241113.20151214. The file wrapper can be found here. Photo "The lost paper - Mallone Forrest [BE]" by Adrian Tombu obtained via Flickr under CC BY 2.0 license (no changes made).


  1. When an applicant requests a decision according to the state of the file, it does not mean that the decision consists merely in filling in a form referring to earlier communications.

    This is only possible a number of conditions are met:
    - the communication referred to contains a proper reasoning and not merely a number of allegations, e.g. T 2813/13.
    - the claims have not been changed after the communication relied upon in the decision according to the state of the file, e.g. T 177/15;
    - it is clear for the communications which is the actual reason leading to the refusal, e.g. T 2208/13 (3 communications referred to!)
    - the applicant has not filed comments or amendments in reply to the last communication of the ED. This is the most frequent error in case of a decision according to the state of the file, like here; e.g. T 2110/10, T 1093/13 or T 2364/09.

    In T 1020/15, the Board has made clear that a decision according to the state of the file does not dispense the ED to properly argue its decision. In T 1020/15 the ED committed no less than 4 substantial procedural violations when deciding upon the state of the file!

    1. The decision T 1020/15 also featured on this blog.

  2. One wonders why the ED did no do an interlocutary revision, A109(1). Such a clear-cut case. What a pity to waste BoA time on this.