In this appeal
from a refusal before the Examining Division, two procedural issues were
raised.
1. The applicant was
willing to amend the claims during oral proceedings to overcome a possible
clarity objection. The application was refused for lack of novelty; the
applicant being taken by surprise that no further amendment was possible.
2. One of the
examiners who had signed the summons for oral proceedings was not present and
replaced by a colleague. The applicant had not been informed.
Summary of Facts
and Submissions
I. The appeal
lies from the decision of the examining division to refuse the European patent
application number 04 030 227.0 for lack of novelty of claim 1 of both requests
on file at that time.
II. At the
request of the appellant, oral proceedings were held before the Board on 15 May
2014. The appellant requested that the decision under appeal be set aside and
that a patent be granted on the basis of the documents submitted at the oral
proceedings of 15 May 2014. Moreover, it was requested that the appeal fee be
reimbursed on the grounds that the examining division allegedly performed two
substantial procedural violations.
Reasons for the
Decision
1. Admissibility
of the final request
1.1 Amended
claims 1-3, forming the basis of the appellant's final request, were filed
during the oral proceedings before the Board.
1.2 Since these
claims overcome various clarity objections raised for the first time during the
oral proceedings, the request was admitted into the proceedings.
2. Novelty -
Article 54(1) EPC 1973, Articles 52(1), 54(3) EPC
[…] The subject
matter of claim 1 is therefore new with respect to the disclosure of D1.
3. Inventive step
- Article 52(1) EPC, Article 56 EPC 1973
[…] Consequently
the invention defined in claim 1 must be considered as comprising an inventive
step.
4. As a result of
these findings, and in view of the fact that the Board has no further
objections with regard to the documents filed at the oral proceedings, the
appellant's request to grant a patent on the basis of these documents is
allowable.
5. Procedural
issues
5.1 Right to be
heard - Article 113 EPC 1973
5.1.1 The
representative alleged that the appellant's right to be heard had been
infringed during the oral proceedings before the examining division.
The
representative explained that, during the oral proceedings, he explicitly
expressed the intention to amend claim 1 of both requests "to solve the
clarity issue - to better reflect the embodiment of Figs. 1 and 2 - so as to
then overcome the lack of novelty". In view of the fact that the examining
division indicated that clarity was not an issue "for the time
being", the representative understood that clarity would be discussed in
the event that the examining division came to a negative conclusion with regard
to the novelty or inventive step of the independent claim of both requests. The
fact that the examining division, after announcing their finding that the
subject-matter of claim 1 of neither request was novel, immediately proceeded
to announce the decision and did not give the representative a chance to file
amendments in a reaction to this finding, meant that the appellant's right to
be heard had been infringed. With reference to T 918/98 (reasons 2) and T
763/04 (reasons 4.3), the representative argued that the right to be heard must
be genuine and realistic; not only must an opportunity to present comments be
given, but the deciding instance must demonstrably hear and consider these
comments. This did not occur in the present case since the representative's
desire to clarify claim 1 was effectively ignored.
5.1.2 According
to the minutes of the oral proceedings, during the discussion of novelty and
inventive step of claim 1 of the main request, the representative
"expressed his intention of amending claim 1 and restricting the scope of
the claims exclusively to figure 1 of the application if necessary to overcome
problems with clarity". In response, the examining division indicated that
clarity was not an issue at that point in time because the intended meaning of
claim 1 was clear. The wording of claim 1 did not prevent the assessment of
novelty and inventive step of the subject-matter defined in the claims on file.
After the representative had made all of his submissions with regard to novelty
and inventive step of the claims of the main and auxiliary requests, the
chairman stated that "a break would now be made to come to a conclusion
about novelty of claim 1 of the main and the auxiliary request". Before
the break, the chairman "asked the representative if he had any further
requests". He had none.
5.1.3 The
representative contested this sequence of events, as evidenced by his request
of 6 March 2009 to correct the minutes of the oral proceedings. He submitted
that he had no recollection of having been asked whether he had any further
requests and consequently had no recollection of making a categoric statement
that he had none.
The
representative submitted that the likelihood of the sequence of events
occurring as recorded in the minutes of the oral proceedings should be assessed
on the balance of probability. In view of the fact that he had repeatedly
indicated his intention to amend the claims (see points 6 and 10 of the
minutes), it was simply not conceivable that he would make a statement at any
later point in the proceedings to the effect that he had no further requests.
5.1.4 The fact
that the chairman announced that the oral proceedings would be interrupted
"to come to a conclusion about novelty of claim 1 of the main and
auxiliary request" is not contested. It was therefore clear to all persons
concerned that the examining division would deliberate on and come to a
conclusion on the novelty of the only requests on file. At this point in the
proceedings, a professional representative should have been aware that, should
the examining division conclude that claim 1 of the main request and claim 1 of
the auxiliary request were found to lack novelty or inventive step, in the
absence of any further requests on file, the examining division would be in a
position to take a decision and that this decision would terminate the
proceedings. Before the announced break the representative should therefore at
least have made clear to the examining division that, in the case of a negative
finding on novelty, he would like to file a further request with the intention
of overcoming the novelty objection. The Board is of the opinion that it is
irrelevant whether or not the examining division asked the representative
before adjourning for deliberation whether any further requests were to be made
(this point in the minutes of the oral proceedings is contested by the
representative). In the Board's view, it should have been clear to the
representative that a possible outcome of the deliberation would be a finding
of lack of novelty of the independent claims of the only two requests on file
and that, in order to avoid a decision being announced immediately, at least
one further request should have been filed before the examining division
deliberated on the main and auxiliary request.
5.1.5 The
representative considered that it was clear to the division, as reflected in
the wording of point 6 of the minutes, that he intended to amend claim 1 by
restricting the scope thereof. The fact that the division did not give him a chance
to do so, despite his clear statement of intent earlier in the oral
proceedings, meant that his right to be heard had been infringed.
5.1.6 In this
regard, the only statement recorded in the minutes which concerns the
representative's intention to amend claim 1 makes it clear that the intended
amendments would be aimed at "overcom[ing] problems of clarity" (see
point 6 of the minutes). As rightly indicated by the examining division, the
clarity of the claims was not an issue at that point: instead, the debate was
concentrated on the novelty of the claimed subject-matter in the wording
presented to the examining division as main and auxiliary requests. Any
amendments aimed at improving the clarity would be irrelevant to the discussion
at that point. If the wording of the independent claim of each request was
clear enough to allow a comparison with the prior art and a conclusion to be
reached with regard to novelty, then the clarity of the claims can be
considered subordinate to the novelty issue.
If it was
actually intended to limit the claimed subject-matter in order to distance the
claims from the prior art such that novelty could be established, then a
corresponding request should have been filed - or at least a statement made
clarifying this intention - before the examining division deliberated on this
issue for the main and auxiliary requests. Under the prevailing circumstances,
the Board can recognise no fault in the conduct of the examining division:
after having discussed the issues of novelty and inventive step with the
representative, they deliberated on the claims of the only two requests on
file, concluded that the independent claim of each request lacked novelty and,
since no other requests had been submitted or were forthcoming, announced the
decision which terminated the proceedings. The Board notes in this regard that
it is not important which version of the events in the oral proceedings is
actually correct: no indication was made by the representative before the
examining division adjourned for deliberation that amendments which were aimed
at overcoming the novelty objection would be forthcoming. Whether the appellant
made a direct statement indicating he had no further requests, or his silence
in this respect implied that no further requests would be made, is irrelevant.
5.1.7 Under point
3.5 of the contested decision the examining division considered the question
"Could the subject-matter of a clarified claim 1 be inventive over
D2?". The representative argued that these observations, which were made
obiter dictum, illustrate that the examining division was indeed aware of the
fact that the representative intended to make amendments to restrict the claim
to a specific embodiment in order to establish novelty.
The Board
disagrees. As outlined in the Guidelines for Examination (version September
2013), E-X, 7.4.2, in the interest of procedural efficiency, any objections
mentioned in an obiter dictum should be taken into account when deciding
whether to grant interlocutory revision. It is therefore not uncommon that
examining divisions include such analyses obiter dictum in the decision in an
attempt to anticipate possible amendments and to inform the appellant of any
objections which would arise if such amendments were to be made. Point 3.5 of
the contested decision simply indicates that, if amendments were to be filed
which restrict the claimed subject-matter to the Figure 2 embodiment, then such
subject-matter would not be inventive. The inclusion of such remarks obiter
dictum represents an attempt to avoid having to grant interlocutory revision.
In the opinion of the Board, the comments of the examining division under point
3.5 of the contested decision cannot be taken as an indication that they were
aware that the representative intended to make amendments restricting the
claimed subject-matter in this manner.
5.1.8 As a
result, the Board considers that the appellant's right to be heard was not
infringed.
5.2 Composition
of the examining division
5.2.1 The
representative submitted that the oral proceedings did not take place before
the legally appointed examining division because the second member of the
examining division present at the oral proceedings was not the same as the
second member who signed the summons to those oral proceedings. The change in
composition of the examining division constituted a substantial procedural
violation justifying reimbursement of the appeal fee.
5.2.2 The
representative submitted that, in accordance with Article 18 EPC, "The
Examining Divisions shall be responsible for the examination of any European
patent applications" and that "An Examining Division shall consist of
three technically qualified examiners". In line with the reasoning of
decision T 390/86 (OJ EPO 1989, 30; reasons 7), it was clear that the
examination of any particular application was in all cases to be conducted and
decided by three technical examiners who were appointed on a personal basis in
respect of that particular application and that the power to examine and decide
a case must be personally exercised at all times by the appointed examiners.
The second member
of the examining division at the oral proceedings was not the same second
member who had signed the summons to the oral proceedings. The representative
considered that this represented a "self-appointment" of the
examining division since there was "no indication that the President of
the EPO under Article 10(2)(g) EPC, or any of his Vice Presidents by delegation
under Article 10(2)(i) EPC, has ever approved the changes in appointment of the
employees composing the Examining Division assigned to the application".
Indeed, it was not possible to establish from the file whether the change in
composition had in fact been approved by anyone. With reference to T 390/86 (OJ
EPO 1989, 30; reasons 7), the representative submitted that this practice manifested
a disregard for the importance of the personal appointment of an examiner and
put the integrity of the change of composition of the examining division into
question. In particular, accepting the self-appointment of members of the
examining division "would open the door to Examining Divisions with
members having the same affinities and opinions on particular points of law
with no consideration for the benefits for the applicants to defend their case
before an Examining Division as fairly diverse as possible."
5.2.3 Moreover,
the failure to record the reasons for the change of the examining division in
the minutes of the oral proceedings constituted a further substantial
procedural violation. Although it was clear from section E-III, 10.2 of the Guidelines
(version December 2007) that the minutes must contain the essentials of the
oral proceedings and the relevant statements made by the parties, the minutes
did not mention the discussion which took place concerning the change of second
member. A request to correct the minutes to include this point was refused.
With reference to
Article 125 EPC, the representative submitted that the right to transparency
was a fundamental procedural principle in the contracting states to the EPC and
that therefore the appellant should have been informed of the change of
division and the reasons for the change. The reason that was given during the
oral proceedings was that the second member who signed the summons was
"not available today because he was not in the office". This
statement, in the representative's view, did not amount to a transparent
explanation, thus leading to a suspicion that the replacement of the original
second member was illegitimate.
5.2.4 The Board
notes that the question of the replacement of a second member shortly before
the oral proceedings has been discussed extensively in decision T 0160/09. The
present Board agrees entirely with both the reasoning and the conclusions set
out in that decision with regard to the composition and constitution of the
examining division (see paragraphs 9 to 13 of the reasons).
5.2.5 […]
5.2.6 The Board
appreciates that in the absence of any documentation relating to the change in
composition of the examining division, it is impossible to verify whether the
replacement of the second member had been officially approved by the relevant
superior. The Board recognises that this lack of documentation may legitimately
lead to a suspicion of "self-appointment". However, the Board is not
aware of any legal provision which would require such documentation to be made
publically available. Moreover, the Board considers that the reference in
Article 10(2)(g) EPC to the fact that the President of the EPO "shall
appoint the employees" does not refer to the allocation of specific
examiners to specific examining or opposition divisions but rather to the
appointment of persons as employees of the EPO.
5.2.7 Rule 11(1)
EPC states that "Technically qualified examiners acting as members of
Search, Examining or Opposition Divisions shall be assigned to directorates.
The President of the European Patent Office shall allocate duties to these
Directorates by reference to the international classification." From this
it is clear that examiners are grouped together administratively to form
directorates. In the Board's view this implies that decisions concerning
administrative matters such as the allocation of examining divisions are
delegated by the President to the directorates. The manner in which examining
divisions are initially constituted and the procedure to follow should the
composition of the examining division have to be changed for any reason does
not appear to be regulated in any manner and is consequently a matter for the
internal administration of the individual directorates. Article 18(2) EPC sets
out only that an examining division shall consist of three technically
qualified examiners and does not require that the initial composition shall be
maintained throughout the proceedings.
5.2.8 Having
regard to the representative's objection as to the lack of explanation
concerning the reasons for the second member's replacement, the Board considers
that the appellant has no right to be informed of any personal circumstances
which may have caused the second member to be absent on the day of the oral
proceedings. He may have been unavailable for any number of personal reasons
(e.g. a death in the family, illness, a traffic accident on the way to work),
the divulgence of which would amount to a violation of his privacy. Indeed,
even the other members of the division may not have been aware of the reasons
for his absence. The representative's insistence that he should have been
informed of the precise reasons for the second member's absence amounts to
nothing more than personal curiosity and has nothing to do with transparency of
proceedings. In the present case, the Board considers that it is sufficient
that the appellant was informed that the composition of the division had
changed.
As confirmed by
the representative during the oral proceedings before the Board, no objection
was raised to the changed composition of the examining division. The competence
of the members of the examining division was not questioned and no doubts were
raised that the replacement member may have been insufficiently prepared.
Indeed, the appellant's case was presented without complaint to the examining
division in its new composition. Moreover, no evidence has been submitted to
suggest that the examining division was not "as fairly diverse as
possible". The Board can therefore safely assume that the composition per
se was not objectionable.
5.2.9 […]
5.2.10 As a
result, the Board can recognise no procedural violation in this respect.
Order
For these reasons
it is decided that: The decision under
appeal is set aside.
This decision has
European Case Law Identifier: ECLI:EP:BA:2014:T120709.20140515.
The whole
decision can be found here. The file wrapper can be found here. Photo by Mike
Light obtained via Flickr.
