Tuesday, August 04, 2020 T 1414/18 - Don't ask and ye shall nevertheless receive, as long as equitable

The central issue in this appeal was the decision to refuse the EP application on the grounds of non-unity. The applicant paid an additional search fee, then requested that it be refunded when submitting responses to the Examining Division and arguments in defense of the unity of the claims. The Board found in favour of the applicant and ordered a refund of the additional search fee, commenting that the decision to refuse the application contained an implicit refusal of the request for the refund, even though a decision on the refund of further search fees should be indicated in the order of the written decision.

The Board was critical of the reasoning given for the need to perform two searches and, in particular, of a communication from the ED in which the applicant was informed, "The next procedural step will be summons to oral proceedings during which the application will be refused (Article 97(2) EPC)". The applicant withdrew the request for oral proceedings and requested a decision according to the state of the file.

The phrase "will be refused" was found to be in contradiction with the principles of the right to be heard under Art. 113(1), as it implied that there were no arguments that could be presented that would not lead to a final refusal of the application. The Board held this to be a substantial procedural violation, which necessitated the applicant's request for a decision according to the state of the file and thus the filing of the appeal. Reimbursement of the appeal fee was ordered on the Board's own motion.

Tuesday, October 15, 2019 T 657/17 - Always ask your money back!

G 3/03 clarified that, in the event of interlocutory revision under Article 109(1) EPC, the department of the first instance whose decision has been appealed is not competent to refuse a request of the appellant for reimbursement of the appeal fee. The current decision relates to the competence of the Board to decide on  reimbursement of the appeal fee in the event of interlocutory revision where the appellant did not explicitly request for reimbursement of the appeal fee. The current decision followers earlier case law, and concludes that, n the absence of a request for reimbursement of the appeal fee, the issue of reimbursement of the appeal fee should not have been referred to the Board for decision, and the Board is also not empowered to decide on this issue as an ancillary matter.

Tuesday, July 11, 2017 T 2092/13 - Misleading communication

In the statement of grounds of appeal against a decision from the Examining Division, the appellant also alleged a series of procedural violations in the first-instance proceedings and requested the reimbursement of the appeal fee. In particular, the appellant submitted that no intention to refuse the application was announced in the official communication preceding the refusal of the application. This argument was further developed by the appellant during the oral proceedings held before the board. The Board agreed with the applicant: "It is a general principle governing relations between the EPO and applicants that communications addressed to applicants must be clear and unambiguous so as to rule out misunderstandings on the part of a reasonable addressee, and that an applicant must not suffer a disadvantage as a result of having relied on a misleading communication. Therefore the board considered that, in the specific circumstances of the case, the examining division's communication created a realistic and reasonable expectation that any subsequent negative finding of the examination division on the issue of novelty and/or inventive step would then be communicated to the appellant before any adverse decision on any of these issues would be taken by the examining division. The appellant could therefore not expect that by closely following the examining division's suggestion [in the preceding communication] in respect of the original claims 1 and 2 a decision refusing the application on the grounds of lack of inventive step of these claims could then be immediately issued." 

Tuesday, March 28, 2017 T 737/11 - Decision according to the state of the file leaves it to speculate on the applicable reasons by mosaicking various objections and arguments

In examination proceedings, the applicant requested an appealable decision according to the state of the file. The Examining Division issued the decision with its grounds as follows: "In the communication(s) dated 22.07.2010, 25.10.2010 the applicant was informed that the application does not meet the requirements of the European Patent Convention. The applicant was also informed of the reasons therein. The applicant filed no comments or amendments in reply to the latest communication but requested a decision according to the state of the file by a letter received in due time on 08.11.2010. The application must therefore be refused."  The decision does not mention the oral proceedings that were held. The communications referred to different requests.

The Board concludes that in the present case considerable uncertainty exists as to the precise reasons on which the contested decision was based. The written decision leaves it to the appellant and the Board to speculate on the applicable reasons by mosaicking various objections and arguments from two communications and possibly other elements of the file, such as the minutes of the oral proceedings - to which the written decision does not even refer. It is therefore not reasoned within the meaning of Rule 111(2) EPC. This amounts to a substantial procedural violation according to Rule 103(1)(a) EPC and to a fundamental deficiency according to Article 11 RPBA

Tuesday, December 13, 2016 T 1825/14 - Extended but then again not?

On the last day of the original 4-month period to respond to an office action, the applicant sent a request for an extension of the time limit by two months to six months. The request was granted. The applicant filed his response on the last day of the 6-month period. About a month later, the applicant received a loss-of-rights communication. The applicant was informed that the "application" had been received at the EPO on 7 December 2011 and that the request for extension of the time limit had therefore been granted "erroneously", the time limit having expired on 6 December 2011. The "extension of time limit" was "considered not having been granted" and, consequently, the applicant's reply was deemed to have been received late... 

Tuesday, May 03, 2016 T 2086/13: Decision set aside and still partly binding?

In this opposition appeal there was a discussion about a (further) procedural violation of the Opposition Division. Another part of the decision relates to "not described in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art" - please read the whole decision if you interested in that part . 
In this case there was an earlier appeal (T 306/09) in which a first decision of the Opposition Divisional was set aside. The first decision contained a substantial procedural violation in the inventive step reasoning. The Board of the earlier appeal remitted the case back to the Opposition Division. Subsequently, the Opposition Division admitted a fresh ground of opposition in the proceedings. 
After the second decision of the Opposition Division, the appeal of this case was filed. The admission of the fresh ground is, according to the appellant, a new procedural violation. According to the appellant, the Opposition could only decide on the subject of inventive step, because (only) that part of the previous decision contained a procedural violation - all other parts of the decision "will stand unless specifically overturned by a higher court."
The original Board wrote "... the decision under appeal is set aside ...". What does that imply for the alleged new procedural violation?

Friday, April 03, 2015 J 14/14 - Notification of a communication

Appeal against a decision of the Receiving Section, whereby an EP (divisional) application  was rejected on the ground that the applicant had failed to correct a deficiency noted by the Receiving Section which had been sent to the appellant on 5 December 2013 pursuant to Rule 58 EPC. However, the appellant's representative -based in London- submitted that did not receive said communication. As proof of delivery in respect of the communication, the EPO gave a letter from Deutsche Post which refered to a registered letter sent to the representative's address in "London / Grossbritannien" on 5 December 2013. The letter from Deutsche Post states that "das ausländische Postunternehmen teilt uns jetzt mit, dass die Nachforschungen nach Ihrer Sendung abgeschlossen sind.Die Sendung wurde am 10.12.2013 an einen Empfangsberechtigten ausgeliefert." The Legal Board of Appeal had to decide on whether the communication had been validly notified or not.

Monday, February 23, 2015 T 0233/12 - Heared, but not listened to?

A European patent application was refused during  oral proceedings while no one was present for the appli­cant. In preparation for the oral proceedings, the applicant had filed amended claims along with corresponding arguments. The exa­mining division considered that the pro­posed amendments "prima facie [...] contradict[ed] the requirements of Articles 84 EPC and/or 123(2) EPC" and therefore did not give its "consent to the proposed amendments under Rule 137(3) EPC". 

Summary of Facts and Submissions

I. The appeal lies against the decision of the examining division to refuse European patent application No. 07103013.4.

II. The decision was delivered during oral proceedings. In preparation for them, the applicant had filed amended claims along with corresponding arguments. At the oral proceedings however no one was present for the appli­cant. The exa­mining division considered that the pro­posed amendments "prima facie [...] contradict[ed] the requirements of Articles 84 EPC and/or 123(2) EPC" and therefore did not give its "consent to the proposed amendments under Rule 137 (3) EPC". The application was then refused under Article 97 (2) EPC with reference to Article 78 (1) (c) EPC.