T 17/22 - On the "Invitation pursuant to Rule 137(4) EPC and Article 94(3) EPC"
In the present case, the examining division issued a decision to refuse the application based on the ground under Article 123(2) EPC and on lack of novelty, lack of inventive step and lack of clarity. However, the examining division had issued only two communications before deciding to refuse the application: the first was a communication under Rules 161(1) and 162 EPC, inviting the applicant to correct any deficiencies noted in the written opinion raised by the EPO as ISA in the international phase, and the second was a communication under Rule 137(4) EPC headed "Invitation pursuant to Rule 137(4) and Article 94(3) EPC", accompanied by an annex raising an objection under Article 123(2) EPC and the statement: "nota bene: The amendment appears also not suitable to remedy the deficiencies". In the statement setting out the grounds of appeal, "the appellant contended among others that the examining division had committed a substantial procedural violation as, in the proceedings before the examining division, the appellant never had the opportunity to address the objections as expressed in the appealed decision. Moreover, with the invitation pursuant to Rule 137(4) EPC, the appellant had only been alerted that certain amendments had not been sufficiently identified and/or their basis in the application as filed has not been sufficiently indicated. The subsequent decision to refuse the European patent application without any further ado had come completely to the surprise of the appellant. Thus, the appellant submitted that the right to be heard under Article 113(1) EPC had been violated.".
The Board considered the scope of Art. 94(3) EPC in detail and considered that at least one substantive communication pursuant to Art. 94(3) EPC and Rule 71(1) EPC is required before a decision to refuse the application on substantive grounds is issued (or, exceptionally, summons for OP). The Board addressed in detail whether a communication under Rules 161(1) and 162 EPC can/cannot be considered a communication under Article 94(3) EPC and whether an "Invitation pursuant to Rule 137(4) EPC and Article 94(3) EPC" can/cannot considered a substantive communication under Article 94(3) EPC.
This decision T 0017/22 (Oral care composition / COLGATE-PALMOLIVE) of 20.9.2022 (pdf) has European Case Law Identifier: ECLI:EP:BA:2022:T001722.20220920. The file wrapper can be found here. Figure:snapshot from the communication under Rule 137(4) EPC headed "Invitation pursuant to Rule 137(4) and Article 94(3) EPC" dd 15.03.2021,
This is so obviously a mistake by the ED. In such blatent cases I wonder how come the examiner or his superior did not see this when the file landed on their desk for interlocutary revision. This case should never have gone to the BoA
ReplyDeleteIt seems a very important decision for us, dealing with PCT appl. entering EP phase with clarity problems
ReplyDeleteRoel, can we say, based on this decision, that whenever substantive issues as novelty and inventive step are not dealt (examiner has not commented further novelty/inventive step after proposed amendments), just clarity issues /A.84 and A123(2)/, then A.94(3) communications have to continue till substantive point is resolved despite the number of A.94(3) communications?
Dear Mariya,
Deletein my opinion, no, the conclusion cannot be drawn that the Examining Division would be obliged to issue any particular number of communications under Article 94(3) EPC until the application is amended in such a way that patentability under Articles 52-57 EPC can usefully be adressed.
For an Examining Division to be able to refuse an application, a single deficiency (under Article 84 or 123(2) EPC or otherwise) is sufficient to be able to refuse the application, provided it has given the applicant an opportunity to state its point of view on this deficieny, in writing, and/or, if requested, during oral proceedings.
There is no requirement put on an Examining Division to exhautstively deal with all requirements of the EPC before refusing an application.
However, when upon appeal, the board disagrees with the Division's finding on the deficiency that founded the refusal, the consequence will be a remittal to the Examining Division for further examination with regard to the other substantive (e.g. patentability) requirements of the EPC.