Tuesday, August 28, 2018 T 0536/13 - A too hasty decision

An Applicant requested a so-called "decision according to the state of the file" after an unsuccessful telephone consultation with the first examiner in response to summons for oral proceedings in examination and subsequent written submissions. In its decision, the Examining Division argued that "The applicant filed no comments or amendments in reply to the latest communication ..." and refused the application.

The Board made short work of overturning the Examining Division's decision, manifesting that not taking into account the Applicant's written submissions in response to the summons, nor providing any reasoning in respect of the Applicant's amendments and comments - including those made in the telephone consultation - amounts to a substantial procedural violation. Accordingly, the decision was set aside, the case was remitted to the department of first instance for further prosecution and the appeal fee was reimbursed.

Saturday, March 28, 2015 G 3/14 (2) - EPC requires all dependent claims to be examined on clarity too

 

We discussed the main answers given by the Enlarged Board in G 3/14 to the referred questions in yesterday's post "G 3/14 - is the clarity issue newly introduced or not?". Today, we give attention one of the analyses underlying the decision: must all claims be examined on clarity by the Examining Division, also all dependent claims? The Enlarged Board seems to answer this with a very clear "yes".

Background / Summary of Facts and Submissions

Introduction

I. During the appeal proceedings in the referring case (T 373/12) the proprietor filed an auxiliary request for maintenance of the patent which consisted of a combination of granted claim 1 and granted dependent claim 3. This granted dependent claim contained a lack of clarity, namely that the claimed article was coated "over substantially all its surface area". By its decision dated 2 April 2014 and in the light of what was seen as conflicting jurisprudence of the Boards of Appeal, the Board referred the following questions to the Enlarged Board of Appeal under Article 112 EPC (hereafter: "the referred questions"):