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.

Friday, November 20, 2015 T 0893/13 - Reimbursement of earlier appeal fee

This appeal follows an earlier appeal against the decision of the examination division to refuse the patent application based on a.o. a lack of clarity. In the earlier appeal, the examining division rectified its decision under Article 109(1) EPC and continued examination, only to decide (again) that the application did not comply with a.o. Article 84 EPC.

In the first appeal, the appellant did not request reimbursement of the first appeal fee, nor did the examining division order such reimbursement of its own motion. However, after rectifi­ca­­tion, the appellant did request reimbursement of the first appeal fee. In the present appeal, the appellant now (again) requests that the fee for the first appeal be reimbursed.

Monday, February 16, 2015 T 1495/09 - Patent granted for Great Britain despite missing designation

This opposition appeal played a role in a series of court cases explained in an article by Gordon Harris. The appeal before the EPO is interesting in its own right. We have also blogged about this case in the context of the unitary patent. 


The request for grant form for the patent contained the following: "GB is expressly NOT designated in this application." However, it appears that the EPO overlooked this statement and granted a patent for GB anyway.

The opponents challenge this grant for a member state that seems explicitly abandoned, both with the opposition division and with the Examining division; the latter under R.140 EPC.

However, the Board of appeal does not allow the opposition division to correct an error in a decision of the Examining division. The Examining division did not correct this 'error' either. This leads the way to court cases in which the proprietor tries to enforce the GB validation. In the end, the latter is unsuccessful but only because the patent is considered not infringed. Also the judge would not review the administrative procedure leading up to the grant.

I've put error in quotes since the board does not address the question whether this grant really was an error. The Examining division itself does not seem to think so; in a communication of 17/4/2009 it considers the abandonment of the UK designation to ambiguous.



Summary of Facts and Submissions
I. All parties, the patent proprietors (henceforth "Virgin"), opponents 01 (henceforth "Cathay"), opponents 02 (henceforth "Airbus") and opponents 03 (henceforth "Premium") appealed against the interlocutory decision of the Opposition Division dated 18 June 2009. In its decision the Opposition Division maintained the patent in amended form on the basis of the claims of the first auxiliary request then on file.

II. In the course of the oral proceedings held 9 September 2010 before the Board, Virgin withdrew all former requests and filed a new sole request and requested that the decision under appeal be set aside and that the patent be maintained in amended form on the basis of this sole request.

Premium and Airbus requested that the decision under appeal be set aside and that the patent be revoked. This request had also been made in writing by Cathay, who informed the Board with letter dated 1 September 2010 that they would not be represented at the oral proceedings.

Premium further requested the correction of the decision to grant by deleting the designation of GB. This request had also been made by Cathay in writing.

(...)

Reasons for the Decision
(...)


7. Request for correction of the decision to grant under Rule 140 EPC


Premium and Cathay requested the Board to correct the decision to grant under Rule 140 EPC by deleting the designation of the Contracting State GB since in their view, said designation contained an obvious mistake.

Premium and Cathay assert that it lies within the competence of the Opposition Division to correct the Examining division's decision to grant a patent pursuant to Rule 140 EPC (identical with former Rule 89 EPC 1973). However, the present Board agrees with Virgin and believes that only the Examining Division is entitled to correct its own decision.

Rule 140 EPC reads as follows: "In decisions of the European Patent Office, only linguistic errors, errors of transcription and obvious mistakes may be corrected."

The Board agrees with Premium and Cathay that Rule 140 EPC does not specify the competence to correct errors in a decision. The Board also notes that there is no other provision in the EPC specifying the competence for such a correction decision. Therefore, an interpretation of Rule 140 EPC is necessary on this issue. The case law of the Enlarged Board of Appeal and the Boards of Appeal has dealt with the question of which EPO department of first instance is competent to correct the decision for grant. In its decision G 8/95 (OJ EPO 1996, 481) the Enlarged Board of Appeal held: "The competence to correct errors in a decision under Rule 89 EPC [1973] lies with the body which has given the decision. Hence, in the examination procedure the Examining Division has to decide on a request to correct errors in the decision to grant." (Reasons 3.4). In the decision T 850/95 (OJ EPO 1996, 455) leading to the referral, the facts indeed differed from those of the present case since the request for correction was submitted prior to the mention of the grant of the patent and therefore prior to the date on which the decision to grant took effect according to Article 97(4) EPC 1973. Consequently, no opposition proceedings were pending at the time when the request for correction was filed. However, according to the case law of the Boards of Appeal, the Examining Division has the competence to correct its own decision to grant also in situations where the request for correction was submitted after the initiation of opposition proceedings (T 226/02 and T 268/02, both decisions not published in the OJ EPO). In both decisions the Board referred to G 8/95 (loc. cit.) and held that the competence to correct errors in a grant decision lied with the Examining Division which had taken that decision. In T 226/02, where the Opposition Division had corrected the grant decision pursuant to Rule 89 EPC 1973, the Board came to the conclusion that "the Opposition Division acted ultra vires in taking a decision under Rule 89 EPC [1973] to correct a decision of the Examining Division" (Reasons 5.1). In decision T 79/07 (not published in the OJ EPO) the Board acknowledged the Examining Division's competence for correcting the grant decision even after the Opposition Division had revoked the patent by a decision which was the subject of the appeal proceedings. In the Board's view the reason for acknowledging the Examining Division's exclusive competence to decide on a request for correction of the grant decision could be seen in the requirement developed by case law that the correction of a decision is admissible only if the text of the decision is manifestly other than intended by the department concerned. Hence there is an obvious mistake in a grant decision within the meaning of Rule 140 EPC, if the text given for grant is not and obviously cannot be what the Examining Division actually intended, and the text erroneously indicated can be replaced by that on which the Examining Division actually wanted to base its decision (see T 850/95, loc. cit., Reasons 3. and T 1093/05, Reasons 7.).

Premium argue that, in accordance with Article 114(1) EPC 1973, the Opposition Division had to correct the grant decision since, as stated in decision T 156/84 (OJ EPO 1988, 372), it had the duty vis-à-vis the public not to grant or maintain patents which were not legally valid, irrelevant of how and when the EPO became aware of the circumstances being relevant for the legal validity of a patent. The Board, however, does not agree with this argument. The principle of examination by the EPO of its own motion as set out in Article 114(1) EPC 1973 applies in all proceedings before the EPO. However, this principle cannot justify acting ultra vires and it therefore only applies to the extent to which the EPO department acts within its competence. This finding is also in line with decision T 156/84 (loc. cit.). The Board of Appeal concluded there that for establishing whether a granted patent can be maintained the Opposition Division was obliged to examine the relevance of cited state of the art even if it was introduced after expiry of the opposition period because the principle of examination by the EPO of its own motion (Article 114(1) EPC 1973) took precedence over the possibility to disregard late-filed facts or evidence (Article 114(2) EPC 1973). Decision T 156/84 (loc. cit.) concerned the question of how the Opposition Division had to deal with late-filed evidence which was filed in support of the ground for opposition under Article 100(a) EPC 1973.
 However, there is no indication in decision T 156/84 (loc. cit.) that Article 114(1) EPC 1973 could establish any competence. Consequently, neither Article 114(1) EPC 1973 nor decision T 156/84 (loc. cit.) provides a basis for a competence of the Opposition Division for correcting the grant decision.

Lastly, the Board turns to the argument that the principle of good faith and the principle of proportionality, which were applicable pursuant to Article 125 EPC 1973 in proceedings before the EPO, would establish a competence of the Opposition Division for correcting the grant decision. The purpose of Article 125 EPC 1973 is to fill any gaps that may occur in the application of the procedural provisions of the EPC. However, the Board considers that these principles also do not establish a competence of the Opposition Division to correct the grant decision for the following reasons.

According to Article 19(1) EPC 1973 the Opposition Divisions are responsible for the examination of oppositions against any European patent. The substantive examination of the opposition is prescribed in Article 101 EPC. If the opposition is admissible, the Opposition Division examines whether at least one ground for opposition laid down in Article 100 EPC 1973 prejudices the maintenance of the European patent (Article 101(1) EPC).

Article 100 EPC 1973 lays down the exclusive grounds for opposition being limited to and essentially the same as some grounds for revocation under national law (Article 138(1)(a)-(c) EPC 1973). The function of this provision is to provide, within the framework of the EPC, a limited number of legal bases, i.e. a limited number of objections on which an opposition can be based (G 1/95, OJ EPO 1996, 615, Reasons, point 4.1). An incorrect designation of a Contracting State is not one of the grounds for opposition under Article 100 EPC 1973. This has also not been disputed by Premium and Cathay. It is established Board of Appeal case law that further grounds which would lead to a refusal of a European patent application in the examination proceedings cannot be successfully presented in opposition proceedings (see for example G 1/91, OJ EPO 1992, 253; J 22/86, OJ EPO 1987, 280, Reasons, point 18; T 99/85, OJ EPO 1987, 413, Reasons, point 4; T 127/85, OJ EPO 1989, 271; T 301/87, OJ EPO 1990, 335, Reasons, point 3.3 and 3.4; T 550/88, OJ EPO 1992, 117, Reasons, point 4; T 428/95, not published in the OJ EPO, Reasons, point 4.2). In view of this established case law and the relevant EPC provision, the Board considers that the opposition procedure is not designed to remedy all possible deficiencies of the granting procedure or of a granted patent. For example, an objection on the basis that the granted patent claims are not concise and clear cannot be considered by the Opposition Division (see for example T 336/96, not published in the EPO). Also defects and errors of a purely formal character in the granting procedure cannot lead to a revocation of the patent in opposition proceedings since such defects are properly regarded as cured by the act of grant (J 22/86, loc. cit., Reasons 18.). Hence the scope of opposition proceedings is limited as regards the grounds for challenge to granted European patents.

Also after grant observations of third parties under Article 115, first sentence EPC are only admissible if they oppose the patentability of the invention to which the patent relates. "Patentability" refers only to the substantive requirements set out in Articles 52 to 57 EPC as the identical heading of Chapter I, Part II of the EPC suggests.

The provisions of Articles 99 et seq. and Article 115 EPC were drafted with the public interest in mind (see also T 60/91 (OJ EPO 1993, 551, Reasons 9.5). Therefore, in inter partes opposition proceedings before the EPO account must not only be taken of the interests of the parties involved. The Board shares the view that the EPO also has a duty vis-à-vis the public not to grant or maintain patents which it is convinced are not legally valid and that the public has to be enabled to rely as far as possible on the legal validity of a patent granted by the EPO (see T 156/84, loc. cit., Reasons 3.5). However, this duty is subject to restrictions. As set out above, opponents in opposition proceedings and third parties filing observations can challenge the patent only in a limited scope. This means that neither the public nor opponents have legitimate expectations that any deficiency of the granted patent would be remedied by the EPO. Consequently, in the present case, the public could not legitimately expect that the designation of the Contracting State GB would be corrected in opposition proceedings. Therefore, the principle of good faith does not apply in the present case.

For similar reasons the principle of proportionality does not apply in the present case. It is obvious from the EPC provisions concerning post-grant proceedings that the legislator did not envisage empowering the Opposition Division to set aside all legal and factual consequences of any mistake which occurred in examination proceedings. It is therefore the Board's view that the authority conferred to the Opposition Division by the EPC provisions cannot be extended because of the principle of proportionality.

In view of the above the Board concludes that in the present case the Opposition Division in opposition proceedings had no competence to correct the decision taken by the Examining Division. Thus the Opposition Division would have acted ultra vires if it had corrected the grant decision. The same applies to the Board of Appeal in opposition appeal proceedings (Article 111(1), second sentence EPC 1973). Consequently, the request for correction of the decision to grant must be rejected.
ORDER
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the first instance with the order to maintain the patent on the basis of the following documents:
- Claims 1 to 8 filed as sole request during the oral proceedings;
- Pages 2 to 8 of the description filed during the oral proceedings;
- Drawings as granted.
3. The request for correction of the decision to grant is rejected.
 

This decision has European Case Law Identifier: ECLI:EP:BA:2010:T149509.20100909. The whole decision can be found here (pdf). The file wrapper can be found here. Photo "The Queen's Guards
" by Swaminathan obtained via 500px under CC BY 3.0 license (no changes made).

Friday, February 13, 2015 T 2249/13 - Refund after declaration of no search?

No documents were cited

A Claim that is seen to lack technical features can have a hard time at the EPO. The applicant was refused a patent with the following claim:

1. A mobile communication device comprising:
     a transmitter configured to transmit data, messages, and commands;
     a receiver configured to receive data transmissions and information, including via one or more live data feeds;
     one or more input devices for receiving user inputs;
     a display screen; and
     a processor executing software that causes said communication device to generate and display a first interactive graphical user interface (GUI) on said display screen,
     said first interactive GUI simultaneously displaying live market data and information received via at least one of said live data feeds in the form of:
     a dynamic market window displaying user-selected multimedia content,
live market statistics, and
     at least one execution icon that when selected, invokes said communicating device to generate and transmit a transaction execution command."

The applicant had received a no search, and no invitation under R.63(1) to indicating the subject-matter to be searched. Neither the search division nor the examining division cited any prior art document.The applicant is asking the Board to refund the search fee, as no search has actually been performed.

The applicant was refused as not being inventive over a notorious smart phone. The applicant tries to argues that the Claim nevertheless requires technical considerations and cannot be refused in this manner. How can one show that a claim feature implies a technical consideration?


Reasons for the Decision
(...)
Main request Article 56 EPC - Inventive step

2. The Board sets out from close prior art represented by a mobile communication device in the form of a notorious smart phone comprising an interactive graphical user interface (touch screen), as acknowledged in the application (A1, column 1, lines 26 to 31).

3. In the light of Article 52(1)(2)(3) EPC, Article 56 EPC requires a non-obvious technical contribution (see e.g. T 641/00-Two identities/COMVIK, Headnote 1, OJ EPO 2003, 352; T 1784/06-Classification method/COMPTEL).

4. The cognitive meaning of information received, displayed and transmitted (multimedia content, market data, transaction execution command) does not have any non-obvious technical implication for the functioning of the communication device and its interactive graphical user interface (GUI). The appellant has argued that a "transaction execution command" implies an automatic (i.e. technical) compilation of a plurality of data items as a "transaction" presupposes information on at least two trading partners, the commodity to be traded, an accepted price and the like. However, the underlying technical operation is carried out by any conventional smartphone used for an online shopping transaction. (If that operation was non-obvious, the application would have to disclose it in enabling detail.)

5. The use of an icon as a means for inputting a command is another notorious GUI feature. Similarly, displaying various types of information simultaneously in one window ("dynamic market window") is anticipated by GUIs of conventional smart phones which display internal and external data and metadata.

6. The appellant's central argument with respect to inventive step was that the claimed communication device was arranged to receive live data feeds, i.e. real-time transmissions updated in "milliseconds" (A1, paragraph 0137), which were significantly more sophisticated than conventional, slower data transmissions. Prior mobile devices were unable to connect to multiple feeds (statement of grounds of appeal, bottom of page 4). Setting out from a conventional communication device, there was no hint for the skilled person to provide live data feeds for improving the mobile retrieval, display and/or interaction with critical market data.

7. The Board first notes that updating a transmission is primarily an operation of the transmitting device (e.g. a server) and may not require any modification of the receiving device (i.e. of the mobile communication device claimed). Once a conventional communication channel to a conventional communication device has been established, transmitted data may be updated by the sender as frequently as desired.

8. Moreover, while the application frequently mentions live data feeds, it does so essentially in the form of catchwords or desiderata without explaining any non-obvious technical background of such feeds. The appellant relied on a single feature in the description (A1, paragraph 0156: data compression) to show that the application provided some technical detail enabling live data feeds. However, that feature represents common general knowledge in data processing (zip files, for example), and it is up to the skilled person to weigh up its well-known advantage (reduced data volume) and disadvantages (compressing/decompressing steps). While a compressed data volume can be transmitted more quickly, the compression and decompression steps may eat up the time saving. This (conventional) compromise is confirmed by the application which states that data compression is used to "optimize" communications (A1, paragraph 0156) rather than to maximise the updating speed. In other words, no non-obvious approach is disclosed for providing the desired real-time market information.

9. As far as multiple real-time feeds to a mobile communication device are concerned, the Board again notes that this is not necessarily a feature of the claimed receiving device as the desired data may be aggregated by a sending server (A1, paragraphs 00010, 0012 etc), the server not being part of claim 1.

Moreover, no non-obvious technical implementation of multiple real-time feeds to a mobile communication device is detailed in the application. The Board accepts that such an implementation was available to the skilled person but pre-existing knowledge cannot be an inventive contribution.

10. The Board finally notes its disagreement with the argument that the skilled person had no obvious reason to enhance a mobile device by live data feeds. Real-time transmissions were demanded by market participants (A1, paragraph 0004), i.e. this user demand is the obvious task addressed by the skilled technical person.

11. Therefore, the Board judges that the mobile communication device according to claim 1 of the main request does not involve an inventive step.

(...)

Request for a (partial) refund of the fee for a European search
24. The appellant considers that the EPO has enriched itself unfairly by receiving the search fee without performing a search. According to the appellant, the no-search declaration of the search division cannot be deemed to be a European search report under Rule 63(2) EPC as the search division ignored Rule 63(1) EPC by failing to invite the appellant to file a statement indicating the subject-matter to be searched.

Even in the absence of a specific reimbursement provision in the EPC, the search fee should be reimbursed (partly) according to a pertinent principle of law (condictio ob rem) generally recognised in the Contracting States (Article 125 EPC).

Article 9 of the Rules Relating to Fees is said to reflect the principle of fairness as it grants a refund of the search fee if the European patent application is withdrawn or refused or deemed to be withdrawn at a time when the Office has not yet begun to draw up a search report. By way of analogy, the same principle should apply to cases where the EPO has deliberately chosen not to conduct a search, in particular where the choice is based on an unjustified discrimination of subject-matter according to the Notice from the European Patent Office dated 1 October 2007 concerning business methods (OJ EPO 2007, 592) which announced a no-search policy for claims pertaining to business methods. In similar fields (such as gaming machines), searches are provided even on minor technical features. In any event, the Notice concerning business "methods" is not applicable to the claims of the present application which relate to "devices" comprising technical features. Hence, there has never been any justification for omitting a search.

25. The Board points out that it applies the EPC and associated provisions as they stand. The Rules Relating to Fees do not provide for a refund of the search fee in case of a no-search declaration under Rule 63 EPC. Rule 63(2) EPC states that such a no-search declaration shall be considered as the European search report.

26. The fact that the search division did not comply with Rule 63(1) EPC (failure to communicate with the appellant) does not alter the legal situation. The search division's actions are not open for review by the Board (Article 106(1) EPC) and, for the same reason, the search division's reliance on the Notice from the European Patent Office dated 1 October 2007 concerning business methods is neither.

27. The appellant referred also to Article 125 EPC to postulate a right to a (partial) reimbursement of the search fee when no prior art search has been carried out. Article 125 EPC reads:
"In the absence of procedural provisions in this Convention, the European Patent Office shall take into account the principles of procedural law generally recognised in the Contracting States."
What the appellant claims here is to apply an allegedly pertinent principle of law in the Contracting States, namely the law of unfair enrichment. However, the law of unfair enrichment is provided by substantial law, not procedural law. Thus, Article 125 EPC does not provide any basis for the appellant's claim to reimburse the search fee.

28. For the sake of completeness, the Board wishes to express its awareness of the appellant's fundamental right to judicial review but that does not mean that such a review has to be provided by the Boards of Appeal in all types of disputes between an appellant and the European Patent Office or Organisation.

In particular, the Board is not competent to decide on claims for compensation in respect of a loss or damage allegedly caused by the EPO in the course of patent grant proceedings, see e.g. J 14/87 (OJ EPO 1988, 295, point 13, referring to Article 9 EPC "Liability").

29. Therefore, the Board considers that the request for a (partial) refund of the search fee is inadmissible.

(...)

This decision has European Case Law Identifier:  ECLI:EP:BA:2014:T224913.20141017. The whole decision can be found here (pdf). The file wrapper can be found here. Photo "reading in white" by 

Magdalena Roeseler obtained via 500px under CC BY 3.0 license (no changes were made).

Friday, August 08, 2014 J 16/13 - Obviously erroneous formal order

How to determine a board's competence pursuant to Article 21(3) EPC when the formal order of an appealed decision is obviously erroneous to such an extent that it is essentially incomprehensible when compared with the reasons in the body of the decision?

This is an appeal against the decision of the Examining Division, posted on 5 October 2012, not allowing the request of the applicant, now appellant, that a wrongly filed description and claims be completely exchanged under Rule 139 EPC for those of the priority document.

According to the order of the decision found on page 1 of EPO Form 2916, entitled "Decision", the following was decided: "In the matter of European patent application No. 08167183.6 it is decided as follows: The request under Rule 139 EPC to exchange the wrongly filed description and claims cannot be allowed".

However, the decision was issued with a cover page, EPO Form 2007, with a different order, namely a refusal of the application. The decision also contained the signature page with the signatures of the members of the Examining Division, EPO Form 2048.2, which contained the order that the application was refused on the basis of Article 97(2) EPC. The refusal was also registered in the electronic file system of the EPO.

Notice of appeal was filed on 5 December 2012, and appeal fee was paid the same day. The statement setting out the grounds of appeal was filed on 21 January 2013. 

The appellant's main request was that the decision under appeal be set aside and that the correction of the specification under Rule 139 EPC and the filing of the correct one be allowed. 

Reasons for the Decision

1. The appeal is admissible.

Competence of the Legal Board of Appeal

2. On the face of the decision under appeal, the Examining Division decided that the application is refused on the basis of Article 97(2) EPC. This wording is found on the cover page (EPO Form 2048.2) containing the signatures of the members of the Examining Division. The attached EPO Form 2007 also contains the refusal as the formal order. However, in the body of the decision the order is worded differently: "The request under Rule 139 EPC to exchange the wrongly filed description and claims cannot be allowed." The reasoning of the decision is also consistent with this order, while apparently none of the reasons supports a refusal of the application under Article 97(2) EPC. The Board takes it that the order in the body of the decision is the correct one which reflects the genuine intention of the Examining Division. Thus the Board considers that the cover page with the refusal is merely a formal error, and that the decision only concerned refusal of the request for correction under Rule 139 EPC. In this situation the question arises whether the Board competent for deciding on the appeal under Article 21(3) EPC should be chosen according to the (erroneous) formal legal effect as derivable from the cover page or the Register, or rather according to the intended (factual) legal effect as derivable from the body of the decision, in particular its reasons and other statements it contains.

3. The Board is aware of decision T 1382/08 of 30 March 2009, in which under comparable circumstances a Technical Board of Appeal found that it was competent to decide an appeal filed against a decision on a request under Rule 46(2) EPC 1973 (refund of further search fees). (It is noted that this decision preceded decision G 1/11 of 19 March 2014 of the Enlarged Board of Appeal, deciding that for appeals concerning such requests, when not part of a grant/refusal, a Technical Board of Appeal is competent). The deciding Board in case T 1382/08 derived the competence of a Technical Board under Article 21(3)(a) EPC 1973 from the formal legal effect of the decision (refusal), in spite of the fact that it was obviously erroneous, as in the present case. Furthermore, also as in the present case, the refusal was entered in the European Patent Register. The deciding Board held that the legal effect of the decision as apparent towards the public was decisive for determining the Board competent pursuant to Article 21(3) EPC 1973 (corresponding to Article 21(3) EPC), see point 1.3 of the Reasons.

4. The present Board does not follow this formal approach, which has certain disadvantages. First of all, such a situation would, in theory, in all likelihood lead to a remittal to the department of first instance on the basis of a substantial procedural violation, on the grounds of missing or contradictory reasons. Simply ignoring the wrong formal order of the appealed decision is not an option, because a possible dismissal of the appeal (on the underlying substantive issue) will make this wrong formal decision final (and as such essentially incurable). Remittal causes significant delay to the proceedings, without seeming to provide any satisfactory legal relief to the appellant. This route was also chosen by decision T 1382/08. Alternatively, a "formally competent" Board taking up the case may choose to decide the case on the merits, but this leads to the rather unsatisfactory situation that the case is decided on its merits by a Board which in fact is not competent, given the legislative intent behind Article 21(3) EPC. This can be particularly problematic if in this manner the Legal Board rather than a Technical Board decides a case on technical issues (see also G 1/11, point 10 of the Reasons).

5. These disadvantages are also apparent here. A transfer of the case to a Technical Board for the sole purpose of setting the decision under appeal aside, e.g. on the basis of a substantial procedural violation, and remitting the case for correction of the decision does not seem equitable towards the appellant, to whom the error of the Examining Division cannot be imputed. However, this is not necessary. In its decision G 1/11, the Enlarged Board of Appeal found that where in the regulation of the competences between the Technical Boards and the Legal Board a lacuna in the law is discernible, the substantive matters to be decided on should be guiding when assigning the case to the appropriate Board (point 13 of the Reasons). The Enlarged Board of appeal concluded that a lacuna in Article 21(3) EPC existed, in the sense that it could not be established if the legislator had indeed considered the special and apparently contradictory constellation of the substantive issues (unity of the application, a technical question) and the competent Board (the Legal Board) which would have followed from a "blind" application of Article 21(3)(c) EPC. The Enlarged Board of Appeal held in decision G 1/11 that in this situation the substantive issues and procedural economy should be decisive, which clearly pointed to the competence of the Technical Board.

6. The Board holds that the same considerations are applicable here. It can be safely presumed that the legislator did not intend - it could not have seriously intended - to rely on the competence rules of Article 21(3) EPC in those rare and practically unforeseeable procedural situations where a decision is issued with an obviously erroneous and on an objective view, "impossible" order. This is the case where the formal order of the appealed decision is essentially incomprehensible when compared with the reasons in the body of the decision, in particular when it plainly does not correspond to any of the foreseen possible legal effects flowing from the substantive issue underlying the appealed decision. The present Board holds that in such situations, if the competence is supposed to change from one Board to another only because of the "impossible" order, the order can be disregarded for the purposes of Article 21(3)(a) and (c) EPC, and rather the substantive request underlying the decision must be guiding. In the present case this request concerns the allowability of the correction under Rule 139 EPC in combination with the priority document, as explained in detail in points VIII and XVI-XVII above, an issue that quite obviously does not fall under Article 21(3)(a) EPC. Accordingly, the Board is satisfied that it is competent to decide on the case pursuant to Article 21(3)(c) EPC.

Exchange of application documents under Rule 139 EPC ("Main request")

7. The Examining Division based its decision firstly on the argument that the proposed replacement was not evident because it was not clear if the description or rather the drawings were erroneous. As a second independent argument, the Examining Division held that an exchange of the documents would bring in new subject-matter, contrary to Article 123(2) EPC. The general statement in the application pointing to the priority document and other documents of the applicant could not be relied on, as these were not available to the public or the EPO on the date of filing the present application. The Board concurs with the substantive conclusions of the Examining Division, though partly with somewhat different reasoning concerning compliance with Article 123(2) EPC.

(...)

Extension of the time limit for filing missing parts under Rule 56(3) EPC ("first auxiliary request")

Admissibility of the request

21. This request was first submitted in the grounds of appeal, and no decision was made on it by the Examining Division. However, the Board considers that this request and the submitted grounds in support of the request are closely related to the substance of the appellant's original request, namely the request for correction under Rule 139 EPC. Concerning their substantive effects, both requests have the same purpose, namely the replacement of the "wrong" description/claims with the correct ones. Furthermore, the auxiliary request concerns a rather extraordinary, essentially unforeseen procedural possibility, based on the violation of legitimate expectations, another extraordinary circumstance. Thus it appears justified to consider this request not as a request directed at a separate and independent procedure within the grant proceedings, but rather as ancillary to the disputed issue of the correction under Rule 139 EPC. The relevant facts are all on file and require no further enquiries. Therefore, the Board considers it expedient to deal with the request and admits it under Articles 12(2) and 12(4) RPBA.

Allowability of the request

22. Rule 56(3) EPC permits the later filing of missing parts under certain conditions. One condition is that the missing parts must be filed within one of the two possible time limits under Rule 56(2) EPC. Only one of these time limits is applicable, the other one being a fixed time limit (within two months of the date of filing) set by Rule 56(2), first sentence, EPC and which has already expired. Thus the setting of a time limit under Rule 56(3) EPC as requested by the appellant must implicitly rely on the other time limit of Rule 56(2) EPC, namely the time limit set by an invitation to file missing parts pursuant to Rule 56(1) EPC. Such an invitation was not issued by the EPO, but the appellant submits that it ought to have been issued as a question of good faith (or legitimate expectation). Quite apart from the fact that the omission of such a communication in the present case did not in any way violate the appellant's legitimate expectations (see below), Rule 56(1), second sentence, EPC is quite clear: "The applicant may not invoke the omission of such a communication". This means that the applicant alone is responsible for filing the correct documents and thus remains responsible for any loss of rights which may have been caused by the filing of wrong application documents. On this basis alone, the "good faith" argument of the appellant cannot succeed.

23. The Board does not examine in depth under which further conditions, e.g. until which stage of the grant procedure, is it possible for the EPO to issue an invitation to file missing parts under Rule 56(1) EPC. The Board notes that according to the Guidelines "it is not permissible [to rely on it] at later stages of the procedure", see Part H, Chapter IV.2.3.2, but otherwise it is not explained when the "later stages of the procedure" commence. The wording of the rule nevertheless implies that this possibility is limited to the examination of the European patent application under Article 90(1) EPC, i.e. the examination on filing under Rule 55 EPC, concerning the requirements for according a filing date. Arguably, the issuance of the invitation under Rule 56(1) EPC is no longer possible once the examination under Article 90(1) and Rule 55 EPC has been completed by the Receiving Section, and this is clearly the case here, implied by the fact that the case has been transferred from the Receiving Section to the Search Division.

24. Furthermore, reference is made to decision J 27/10 of 9 December 2010, which held that "missing parts of the description" in Rule 56 EPC must mean a genuine part (fraction) of an originally filed description, so that this rule cannot serve as a basis for substituting a complete (or even partial) description, see points 11, 12 and 18 of the Reasons.

25. As to the substance of the "protection of legitimate expectations" argument, it is not apparent to the Board that the EPO made any error. As explained above, the examination of application documents for identifying any missing parts under Rule 56(1) EPC is part of the examination under Article 90(1) EPC, the purpose of which is to establish if a filing date can be accorded. Though it is implicit in this rule that the Receiving Section should check if any parts are missing, this can only be done by comparison with the request for grant, which specifically lists the items filed. However, at this stage the Receiving Section does not (and normally cannot) check the technical contents of the application. In particular, it is under no obligation to check whether the reference signs in the abstract correspond to those found in the drawings which are to be published together with the abstract. The Board can accept that it might have been obvious for a formalities officer in the Receiving Section to discover this fact, provided he was consciously looking for concordance between the abstract and the corresponding Fig. 1. This may even be possible without a formal technical qualification. However, the point is that the Formalities Officer simply did not have any obligation to make this check during the examination under Rules 55 and 56 EPC.

26. It is true that the Guidelines instruct formalities officers to notify the applicant under Rule 58 EPC that the abstract does not belong to the application, as part of the procedure under Article 90(3) and Rule 57(d) EPC (see Guidelines, A-III 10.2, also A-III 16.2). However, the primary instruction to formalities staff is that beyond checking the existence of the abstract, its content is normally checked by the Search Division. Only when it is obvious that the abstract does not belong to the application should this be brought to the attention of the applicant. There are no particular instructions in the Guidelines that the reference numerals must be checked. Otherwise there was no indicataion here that the abstract as filed was wrong in any way: it referred to an existing figure (Fig. 1), and had the same title as the description (Display apparatus and control method thereof). The drawings contained figures that were perfectly consistent with such types of inventions (block diagrams and flowcharts). In short, on an objective view, there was nothing in the file that could have established a reasonable, let alone a legitimate expectation that the abstract would be identified by the Formalities Officer as "obviously not belonging to the application".

27. Further arguments by the appellant that it had not been notified of the error in time and therefore could not take certain steps, such as withdrawing the application before publication or requesting re-establishment of rights in the time limit of Rule 56(3) EPC (see points 2.25-26 of the grounds of appeal), are apparently unfounded. According to the file, the extended European search report was issued on 6 February 2009, i.e. approximately four and a half months after the filing date, but still more than three months before publication. The report included the European search opinion (Rule 62 EPC). The search opinion explicitly stated that "the figures presently on file do not seem to correspond to the disclosure and the claims", see page 2, point 2. Against this background, it remains unexplained why the appellant itself was unable to identify the error earlier than the stated date of 19 January 2010. Under such circumstances, any re-establishment in respect of the time limit of Rule 56 EPC under Article 122 EPC seems hardly possible, quite apart from the other procedural issues that such a request for re-establishment would inevitably raise.

28. The fact that the Search Division approved the abstract pursuant to Rule 66 EPC in the communication issued together with the search report and opinion (see point V above) cannot be objected to. The abstract apparently did correspond to the description. The fact that the figures did not correspond to the description was properly identified by the Search Examiner. It is not apparent what further duty to warn the applicant the EPO might have had at that stage of the proceedings. On this basis, the arguments of the appellant as listed in points 2.21 to 2.31 of the Grounds are apparently without merit. It has simply not been shown that the EPO did not fulfil its obligations in handling the present case.

Further procedure

29. The apparent formal decision to refuse the patent application is obviously wrong. The Board has explained above that remittal to the Examining Division on the basis of a substantial procedural violation would have caused significant delay. A similar delay would be likely if the Board remitted the case to the Examining Division simply with the order to examine if a correction under Rule 140 EPC would be appropriate. Thus the Board decides, also in view of Article 11 RPBA, last passage, to set aside the decision under appeal with the order to continue the proceedings, but the Board refuses the request under Rule 139 EPC that the application documents be exchanged, as well as the request that a time limit under Rule 56(3) EPC be granted. This appears to the Board the most expedient way of preventing the formally wrong decision (refusal of the application under Article 97(2) EPC) from having any substantive legal effect, particularly in view of the fact that dismissing the appeal would immediately make this formally wrong decision final.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

(...)

4. The case is remitted to the department of first instance for further prosecution.

Catchwords

Where the formal order of an appealed decision is obviously erroneous to such an extent that it is essentially incomprehensible when compared with the reasons in the body of the decision, in particular when it plainly does not correspond to any of the foreseen possible legal effects flowing from the substantive issue underlying the appealed decision, and if the competence pursuant to Article 21(3) EPC is supposed to change from one Board to another only because of such an "impossible" order, the formal order can be disregarded for the purposes of Article 21(3)(a) and (c) EPC, and rather the substantive request underlying the decision must be guiding in determining the Board competent to decide the case, see point 6 of the Reasons. (T 1382/08 not followed).

This decision has European Case Law Identifier: ECLI:EP:BA:2014:J001613.20140522. The whole decision can be found here. The file wrapper can be found here.

Photo from freedigitalphotos.net.

Note: blog updated with inclusion of reasons 7 and 21-28 on 30 June 2015.