Wednesday, 12 December 2018

T 2303/16 - refused for lack of two-part form, conciseness and reference numerals

Car towed because of a parking violation

The application was refused after a single office action on the grounds of lack of conciseness, two-part form and reference numerals. In appeal these are addressed but no interlocutory revision was given. 
After entering the regional phase at the EPO in 2006, the applicant received its first office action in 2014. The office action raised clarity issues and a few smaller problems, in particular lack of reference numerals. The international search report had complained earlier about lack of two-part form, and lack of conciseness due to too many independent claims (in addition of substantive problems). In it's reply, the applicant amended for the clarity issue, and addressed the patentability of the claims. The second communication in ten years was a refusal. 
The board did not see a problem with a refusal based on formal issues that were only identified in the ISR, but did rule that interlocutory revision should have been granted. 

Reasons for the Decision
1. The appeal is admissible.
Although in the statement of grounds of appeal the appellant does not specifically address the two-part form of claim 1 and the presence of reference signs, which were two of the three reasons for refusing the application, it is clear when reading claim 1 that these objections have been addressed.
2. The decision under appeal to refuse the application is based on three reasons: the application does not comply with the requirements of conciseness in accordance with Article 84 EPC because there are three independent claims; the independent claims are not in the two-part form in accordance with Rule 43(1) EPC; and the features of the claims are not provided with reference signs in accordance with Rule 43(7) EPC.
As can be seen from the wording of the set of claims of the main request filed with the statement of grounds of appeal, all three reasons have been addressed:
i) claim 1 is the only independent claim of the set, which overcomes the lack of conciseness objection under Article 84 EPC,
ii) claim 1 is written in the two-part form pursuant to Rule 43(1) EPC, and
iii) all the claims are provided with reference signs pursuant to Rule 43(7) EPC.
3. In the Board's opinion, since all the reasons for the refusal on which the decision relied have been overcome, the Examining Division should have allowed interlocutory revision pursuant to Article 109(1) EPC. Not doing so constitutes a fundamental deficiency in the proceedings before the first-instance department.
In this regard, according to established case law, the possible existence of irregularities other than those that gave rise to the contested decision does not preclude rectification of the decision (T 139/87, OJ 1990, 68; T 47/90, OJ 1991, 486; T 690/90, not published).
In particular, other objections mentioned in an obiter dictum that might not have been properly addressed in the new set of claims cannot preclude rectification. Also, in relation to the two-part form, the Board notes that neither in the first communication nor in the reasons for the decision does the Examining Division mention the prior art to be used for the first part of the claim. Neither in the first communication nor in the decision (including its obiter dictum) was there any objection of lack of inventive step that could have given an indirect indication as to which of the documents the Examining Division considered the most appropriate for the two-part form. Consequently, the Examining Division was not in a position to refuse the interlocutory revision, even if it may have considered that the wrong document was used for it or the delimitation was not adequate. A general objection is overcome by a general correction addressing it.
4. The appellant considered that a refusal on formal grounds after only one communication was disproportionate and that the Examining Division should have sent a second communication with all the objections.
The Board notes the following:
In the IPR, the three objections constituting the basis for the refusal were already mentioned together with the novelty objections based on five documents. In its first communication, the Examining Division referred to this report and indicated that the deficiencies mentioned there gave rise to objections under the corresponding provisions of the EPC. This means that the appellant had knowledge of the existence of these objections since it had received the IPR and they were repeated in the first communication of the Examining Division. Despite this, in its response of 6 October 2014, not only did the appellant not address any of the three formal points, but it only addressed two out of the five lack-of-novelty objections in substance.
In such a case, even if the Examining Division could have sent a second communication to the appellant, the Board cannot find any obligation or abuse on its part.
5. The appellant further considered that since it had dealt with all the objections when filing its appeal, the Board should order the grant of a patent.
The primary purpose of an appeal is to challenge a first-instance decision. While pursuant to Article 111(1) EPC the Board may exercise any power within the competence of the department which was responsible for the decision appealed, the Board considers it appropriate for the Examining Division to examine the fulfilment of all other requirements of the EPC when the refusal was based only on formal aspects as in the present case. Additionally, this makes it possible for the appellant to have two-instance proceedings.
Hence, as the new set of claims has not been examined with regard to the other possible objections under the EPC, the Board remits the case to the Examining Division for further prosecution pursuant to Article 111(1) EPC.
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the department of first instance for further prosecution.
This decision T 2303/16 (pdf) has European Case Law Identifier: ECLI:EP:BA:2018:T230316.20181108. The file wrapper can be found here. Photo by Garry Garsky (Ikprivatenet) obtained via Pixabay under CC0 license (no changes made).


  1. In view of the fundamental procedural violation under point 3. of the reasons, a refunding of the appeal fee seems to come into question. The BoA does not seem to have discussed this issue. Was it regarded as not equitable by the BoA in the present case?

    1. Refunding the appeal fee is not a question here. The appeal was neccessary because the applicant, (not the examining division!), didn't follow the rules. They corrected their error only in appeal.

      Maybe the examining division should have indeed rectified the decision before the appeal went to the BoA, but still, the applicant only has himself to blame that an appeal was needed to begin with.

    2. I assume the reason for not refunding the appeal fee is that the procedural violation of the division (missing interlocutory revision despite being obliged to do so) has occured at a point in time after the appeal has been filed.

      A reimbursement of the appeal fee is not equitable in view of this procedural violation, because it has no causal relationship to filing the appeal. In other words, the applicant would have filed the appeal even if the procedural violation was thought away.

  2. Of course, all of this could have been avoided if the representative requested oral proceedings as per usual practice...

    1. Of course, all this could have been avoided if the ED had just, as per usual practice until a few years ago, allowed the applicant another round as long as there was a chance of grant.

      They have become too stringent in the last two years.

      I remind everybody of T84/82, headline 2: II: 'It is the declared aim of the European Patent Office to carry out the substantive examination thoroughly, efficiently and expeditiously, but this requires also a proper collaboration from the applicants, and good faith. The necessity for filing further observations prevails as long as progress towards grant can be envisaged in the light of submissions made'