Friday, October 18, 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.

Tuesday, April 10, 2018 J 10/15 - No jurisdiction for Board of Appeal for decisions of receving section during International phase

Where are those missing figures?

The applicant in this case filed a PCT application through the EPO by having a messenger handing in the application at an EPO office in Munich. About two weeks later, the applicant receives a communication that the figures are missing. 

The applicant does not agree, and wants the receiving section to decide that the figures were present. Subsidiary, a request for incorporation by reference under rule 20.6 jo 4.18 PCT is made. The later request is granted, but the former is not. The applicant appeals the case at the EPO.

Unfortunately for the applicant, the Board of Appeal EPO decides that they are not competent to decide the case. The following head note is provided:

Während der internationalen Phase einer PCT Anmeldung ist eine Beschwerdekammer unzuständig, um eine Entscheidung des EPA als Anmeldeamt zu überprüfen.

which translates to:

During the international phase of a PCT application, a Board of Appeal has no jurisdiction to review a decision of the EPO as receiving Office.