T 1900/10 - More time required

EPO T 1900/10

For the decision, click here.

Key points

• The present appeal against the refusal is successful. The request for reimbursement of the appeal fee is not granted, because no substantial procedural violation had occurred. " The board finds that the representative was given adequate time [during oral proceedings before the Examining Division] to consider the objections."

Reasons for the Decision

1. The appeal is admissible [...]

5.8 In view of the above, the reasons given in the decision under appeal did not convince the board that the application does not disclose the invention claimed in claim 15 of the main request, first auxiliary request or second auxiliary request in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

6. Analogous considerations apply to the other independent claims, which relate to a machine-readable medium, a system and an apparatus which are specified by a reference to other independent claims.

7. Remittal (Article 111(1) EPC 1973)

7.1 The board does not consider that the grant of a patent could be ordered on the basis of the claims filed with the statement of grounds of appeal. This is because full examination of the application, including the claims, as to patentability requirements has yet to be carried out. This is the task of the examining division (see decision G 10/93 of the Enlarged Board of Appeal, OJ EPO 1995, 172, point 4 of the Reasons). In the present case, it is clear that a number of objections were raised in the first-instance proceedings against the patentability of the claims then on file. It is up to the examining division to consider whether these (or any other) objections need to be raised in view of the claims filed with the statement of grounds of appeal, even if the board decides the specific issue considered in the decision under appeal in favour of the appellant.

7.2 Thus the board decided to exercise its discretion under Article 111(1) EPC 1973 in remitting the case to the department of first instance for further prosecution.

8. The appellant's request for reimbursement of the appeal fee

8.1 The appellant requests the refund of the appeal fee under Rule 103 EPC on the grounds that its right to be heard under Article 113(1) EPC might have been infringed (see section B of the statement of grounds of appeal).

8.2 It is Rule 67 EPC 1973 that applies to the present case, not corresponding Rule 103(1)(a) EPC 2000 (see T 630/08, at point 1, citing J 3/06, OJ EPO 2009, 170, point 3, and J 10/07, OJ EPO 2008, 567, point 7). On the same basis, Article 113(1) EPC 1973 is applicable. In substance, the transition from the EPC 1973 to the EPC 2000 did not change the two decisive criteria for such a reimbursement, namely that the appeal must be deemed to be allowable and that such reimbursement must be equitable by reason of a substantial procedural violation.

8.3 In the present case, the latter criterion is not met. The board finds that no substantial procedural violation occurred that breached the appellant's right to be heard under Article 113(1) EPC 1973 (whose wording is identical to that of Article 113(1) EPC). The reasons are as follows:

8.3.1 The appellant argued that it "simply required more time to completely resolve these complex technical questions than the time allotted by the Examining Division" (see point 9 of the statement of grounds of appeal). However, according to the uncontested minutes of the oral proceedings before the examining division (page 3, last two paragraphs and page 4), the appellant was given the requested time to consider the objections under Article 83 EPC raised by the examining division. In particular, according to the minutes there were two interruptions of over one hour each (10.35 until 11.46 hrs and 13.25 until 14.40 hrs) in which the representative had time to consider the examining division's objections, each interruption then being followed by discussions lasting about one hour. Moreover, the objections concerned only the disclosure in the application. Other documents did not need to be considered at that stage. Under these circumstances, the board finds that the representative was given adequate time to consider the objections.

8.3.2 The board also notes that the summons to oral proceedings (section 2 and point 3) left no doubt that the examining division saw essentially unresolvable problems in the application ("the description does not define these features in a sufficiently clear manner to make technical sense of the filed subject-matter"). Moreover, the appellant submitted to the examining division, during the oral proceedings, previously prepared Annexes 1 and 2 to illustrate how the described invention functioned. In particular Annex 2 also indicates paragraphs of the application. The board can interpret this submission only in the sense that the applicant was aware, when preparing for the oral proceedings, that the examining division saw major problems with the disclosure of the described invention, even though it had referred to Articles 56 and 84 EPC as the relevant legal bases in the summons. It was clear from the summons that the applicant's reply to the first communication had not persuaded the examining division that all the raised objections had been overcome.

8.3.3 The appellant also emphasised the distinction between objections under Article 83 EPC and Article 84 EPC and stated that it had considered the objection under Article 83 EPC to have been overcome (see point B.4 of the statement of grounds of appeal). However, it is undisputed that both these articles had been (at least implicitly) referred to in the written phase of the first-instance proceedings. As discussed above, the summons to oral proceedings (section 2 and point 3) left no doubt that the examining division saw essentially unresolvable problems in the description of the application. In particular, some of the features objected to under Article 84 EPC were considered to be insufficiently disclosed in the description (see point 3 of the summons). Thus objectively there could have been no doubt that the examining division considered the description of the invention to be insufficient. Moreover, according to the undisputed minutes of the oral proceedings the examining division informed the appellant in those proceedings that an objection under Article 83 EPC would be raised if the technical questions ultimately recited in the decision under appeal were not answered. Hence, the mere fact that the refusal was ultimately based on Article 83 EPC alone does not raise any problems under Article 113(1) EPC 1973.

8.3.4 In view of the above, the board does not see that any infringement of Article 113(1) EPC 1973 occurred in the first-instance proceedings. No other procedural violation, let alone a substantial one within the meaning of Rule 67 EPC 1973, has become apparent either.

8.4 Therefore, the appellant's request for reimbursement of the appeal fee is to be refused.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

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

3. The request for reimbursement of the appeal fee is refused.