Friday, 2 November 2018

T 0918/17 - Copy-paste approach doesn't cut it

The present case concerns an appeal that was deemed inadmissible for failing to identify the reasons why the impugned decision should be set aside. The decision in question was a refusal by the Examining Division on the grounds of extension of subject matter and lack of inventive step. The initial objection raised in the European search opinion was lack of novelty. In response, the applicant filed amended claims and generally addressed the patentability of the amended claims.

The new independent claim was held to contravene Art. 123(2) and Art. 56 EPC. The next response from the applicant focussed solely on arguments as to why the contested amendment to claim 1 was indeed fully supported in the application as filed. The Examining Division was not persuaded and maintained both its objections, after which the applicant requested a decision according to the state of the file and withdrew the request for oral proceedings. The subsequent decision to refuse was appealed.

In the Board's opinion, the filed statement of grounds did not explain why the Examining Division's Art. 56 objection was incorrect. They also highlighted the fact that the majority of the submission on this issue was a mere copy-paste from the initial response to the search opinion, which was more specifically directed to novelty and only generally addressed inventiveness  The Board therefore held that they were unable to decide on the correctness of the objection without first having to make investigations of their own.

The applicant did not respond to the Board's preliminary opinion on admissibility and the appeal was rejected as inadmissible.

Summary of Facts and Submissions
I. The appeal is against the decision of the examining division to refuse European patent application No. 13190479.9.
II. The decision under appeal was taken "according to the state of the file". The reasons for the decision were based on Article 123(2) EPC and Article 56 EPC and had been given in a communication dated 25 April 2016 accompanying a summons to oral proceedings, in which the claims according to a main request and to an auxiliary request, all filed on 31 August 2015, were considered.
III. The applicant filed an appeal against this decision. With the statement of grounds of appeal the appellant requested that the decision of the examining division be set aside and a patent be granted on the basis of the main request or the auxiliary request underlying the decision under appeal.
IV. The board issued a communication dated 4 July 2018 pursuant to Article 15(1) of the Rules of Procedure of the Boards of Appeal (RPBA) annexed to a summons to oral proceedings. In this communication the board noted that the appeal was likely to be rejected as inadmissible. The reasons given were the following:
"In the present case, the decision was taken following the applicant's request of 11 October 2016 for a decision according to the state of the file. The reasons of the decision are set out in the communication dated 24 April 2016 (note: the reference to the date of 20 April 2016 in the decision is clearly a typographic error). These are: non-compliance with Article 123(2) EPC (main and auxiliary request) and lack of inventive step starting from document D1 (implicitly claim 1 of both requests).
According to established case law (see e.g. T 213/85 and T 1045/02), the grounds of appeal must deal with all those reasons on which the decision under appeal is based in order for the appeal to meet the requirements of Article 108 EPC and Rule 99(2) EPC.
As regards inventive step, the examining division identified one difference over D1, namely the feature "while exerting a force on the wall of less than 40 N" (see page 4 of the communication dated 25 April 2016, first paragraph). The examining division then stated the problem solved and explained why the claimed solution to this problem was obvious (see page 4 of the communication dated 25 April 2016, second and fourth paragraphs).
Although the statement of grounds of appeal generally deals with the issue of inventive step, it does not deal with the specific reasons given in the impugned decision in respect of inventive step. In fact, in respect of "prior art", the statement of grounds of appeal (see point 3) is identical to the arguments submitted in support of the amended claims filed on 14 November 2014 in response to the extended search report (actually point 3 of the decision under appeal seems to be a "copy and paste" of these arguments). It is noted that the extended search report only dealt with D1 in respect of novelty (although in a general, unsubstantiated manner).
Accordingly, the statement setting out the grounds of appeal does not enable the board to understand immediately why the decision (that the claimed subject-matter is not inventive when starting from D1) is alleged to be incorrect and on what facts the appellant bases its arguments, without first having to make investigations of its own (see e.g. J 10/11, T 570/07).
From the above it follows that the appeal is likely to be rejected as inadmissible."
V. The appellant has not replied to the above communication.
VI. Oral proceedings were held on 22 October 2018 in the absence of the appellant. At the end of the oral proceedings the chairman announced the board's decision.
Reasons for the Decision
1. The appellant has not replied to the communication of the board, indicating the reasons for the non admissibility of the appeal. The appellant has thereby not taken position on the admissibility of the appeal. Even after a careful review of the factual and legal circumstances, the board sees no reason to deviate from the preliminary opinion expressed in the communication.
2. The board comes therefore to the conclusion that the appeal must be rejected as inadmissible, for the reasons given in the communication annexed to the summons to oral proceedings (see point IV above).
For these reasons it is decided that:
The appeal is rejected as inadmissible.
This decision T 098/17 (pdf) has European Case Law Identifier: ECLI:EP:BA:2018:T091817.20181022. The file wrapper can be found here. Photo "Adhesive pen"obtained via Pixabay under CC0 license (no changes made).

1 comment :

  1. Tough descion for the appellant, but understandable from a legal point of view.

    According to Rule 99(2) EPC, the appellant shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based.

    Regarding the grounds for refusal concerning a lack of inventive step, the appellant has obviously neither provided reasons (e.g. arguments) nor facts and evidence.

    Thus, I completely share the conclusion of the BoA that the appeal is to be rejected as inadmissible (see Rule 101(1) EPC in connection with A. 108, 3rd sent. EPC).

    However, when reading Rule 99(2) EPC, I stumbled on the term "or the extent to which it has to be amended". Does said term in Rule 99(2) include the possibility to indicate (only) reasons in the grounds of appeal for (simply) amending the impugned decision, i.e. not necessarily reasons for (completely) setting it aside?

    Naturally, this is not very desirable for an appellant because a simple amendment of the decision would - in my view - mean that the appeal is dismissed, i.e. unsuccessful.

    However, the question that I ask myself is the following: Could the present appeal still have been rejected as inadmissible if the appellant had actually provided facts and evidence regarding inventive step?

    In this case, one requirement of Rule 99(2) EPC is fulfilled. Regarding the other requirement, it is true that the appellant has not provided reasons for setting aside the (complete) decision. On the other hand, in the present case, the view could be taken that the appellant has actually provided reasons for amending the impugned decision, i.e. amending the decision to the extent that the refusal is only based on a lack of inventive step, but no longer on a lack of inadmissibility of the amendments.

    Maybe I am on the wrong track. What is your opinion?