Friday, 18 October 2019

T 1032/97 - No refresh of BoA decisions



A decision from 2001 was recently republished on the Case Law site, for distribution to Board chairmen and members.

Background
The patent application concerned was initially refused for lack of clarity and sufficiency of disclosure. After oral proceedings, the Board decided that the claims were in compliance with Articles 83 and 84  and that the case should be remitted to the Examining Division for further prosecution and examination of novelty and inventive step. It was also remarked that the description still contains reference to speculative subject matter that needs to be deleted to bring it into conformity with the claims.

The Applicant-appellant, however, was unhappy with the text of the decision, in particular with the Board's interpretations of the meaning of certain claimed features (e.g. catalyst) based on definitions taken from the Oxford Dictionary. The Applicant had presented a great deal of supporting data at the oral hearing and was apparently under the impression that the Board had attributed a meaning to the term "catalyst" consistent with the Applicant's written description.

The  Applicant then submitted a request that the Board modify its reasons for the decision to conform with its prior rulings at the oral proceedings. The Board's response to this request is the subject of the recent republication.

The request was refused as inadmissible, following G1/97, where the Enlarged Board ruled that the jurisdictional measure to be taken in response to requests based on the alleged violation of a fundamental procedural principle and aimed at the revision of a final decision of a board of appeal should be the refusal of the requests as inadmissible.



Summary of Facts and Submissions
I. At the end of the oral proceedings held on 6 December 2000 during which the appellant had submitted several sets of claims, the decision of the Board of Appeal in case T 1032/97 - 3.4.1 was given on the basis of the last submitted set of claims 1 to 21, deciding that
1. the decision under appeal is set aside and
2. the case is remitted to the first instance for further prosecution on the basis of claims 1 to 21, contained in the main request filed on 6 December 2000.
II. On 9 July 2001 the representative of the appellant filed a request
"1) that the Board modify its reasons for the decision outlined in the written decision to conform with its prior rulings at the oral proceedings that the subject application complies with the clarity and sufficiency of disclosure requirements of Article 84 and 83 EPC, respectively; and
2) that the Board remit the case to the Examining Division for further prosecution consistent with those prior rulings.
In the alternative, Applicant requests that another date be set for further oral proceedings so that Applicant may present additional argument and evidence addressing the new issues raised in the Board's reasons for the decision."
Reasons for the Decision
The present request seeks the revision of a final decision taken by a board of appeal having the force of res judicata. As held by the Enlarged Board of Appeal in decision G 1/97 (OJ EPO 2000, 322), the jurisdictional measure to be taken in response to requests based on the alleged violation of a fundamental procedural principle and aimed at the revision of a final decision of a board of appeal should be the refusal of the requests as inadmissible. The decision on inadmissibility is to be issued immediately and without further procedural formalities by the board of appeal which took the decision forming the subject of the request for revision.
ORDER
For these reasons it is decided that:
The request of the applicant
1. for re-opening of the appeal proceedings is refused as inadmissible;
2. for modifying the reasons for the decision is refused as inadmissible.
This decision  T 1032/97 (pdf) has European Case Law Identifier: ECLI:EP:BA:2001:T103297.20010905
The file wrapper can be found here. Image "Instagram reload-refresh icon" obtained under free Pixabay license

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