T 1022/14 - Re-establishment refused

T 1022/14
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Key points

• The appeal is against the refusal of re-establishment of rights, which was requested because no further processing was requested after not filing a response to a Article 94(3) Communication. The appeal is dismissed.
• According to the Examining Division, " The European representative had admitted that he had not read through the correspondence with the applicant and had failed to observe the applicant's request to file a request for further processing, and thus had not verified that there was indeed no instruction to abandon the case. The failure to request further processing had been caused by his failure to check thoroughly the letters from the Japanese representative. "
• In the letter dated 3 June 2010 the instruction by the appellant's Japanese representative reads as follows:
"... Please be informed that we will not respond to the recent examination report and request Further Processing for further prosecution of the present application. We also request to file a divisional application to pursue claims to iron salen compounds. ...".
• The Board: " In view of this wording the board is unable to follow the European representative's submission that the instruction to file further prosecution for the parent application was ambiguous or that he needed to apply exceptional diligence to understand what was said. Also, the instruction to file further processing of the parent application was not "somewhat hidden". Both letters explicitly stated that no response to the examination report was to be made other than to request further processing. From this it is undoubtedly clear that the application was not to be abandoned but to be further pursued later on and - as a second point - a divisional application was to be filed in due time. This kind of strategy is not particularly unusual and, even if, it was clearly and understandably set out in the letters of 3 and 4 June 2010. So no room for interpretation was available.
• The attorney involved worked with one of the larger UK firms.

For the decision, click here