T 0823/11 - Excessive length

EPO T 0823/11

Link [C]

Key points

• Excessive length of procedure
• This is decision in appeal, dated 21 December 2015  an appeal against a refusal of an application posted on 30 September 2010 of an application having filing date 15 May 1996 and that had entered the European phase on 15 December 1997.
• The Board: " It follows from the summary of the first-instance proceedings (see section II above) that their length was affected by unacceptable delays, [...] . In the opinion of the Board, the delays cannot be justified by the particular circumstances of the case. The duration of the first-instance proceedings of more than twelve years after entry into the European phase must be regarded as excessive." 
• Interestingly, the Board also refers to a decision of the ECHR:
  " The Board's considerations in the present case are also in line with a judgment in the case of Kristiansen and Tyvik AS v. Norway before the European Court of Human Rights (decision of 2 May 2013 in application No. 25498/08), in which the examination and (administrative) appeal proceedings of a patent application at the Norwegian Industrial Property Office took a total of eighteen years before the final decision was issued." The Board notes that the Court had reiterated therein that "in civil length cases examined under Article 6 § 1, the period to be taken into consideration does not necessarily start when the competent tribunal was seized but may also encompass the prior administrative phase".
• The Board does not comment on the length of the procedure in appeal (5 years). In the cited case Kristiansen and Tyvik AS v. Norway, the first instance examination had taken 11 years (similar to the present case); the ECHR decision seems to have considered the total length including the appeal stage. 
• Insufficient reasoningThe Board uses the opportunity to note that: "A further issue concerns the reasoning given in the examination proceedings. According to Rule 71(2) EPC any communication under Article 94(3) EPC must contain a reasoned statement covering, where appropriate, all the grounds against the grant of the European patent. These provisions, [...] have been interpreted by the established jurisprudence as implying that the applicants have to be informed, for each EPC requirement deemed not to be met, of the legal and factual reasons why it was considered not to be met" .
• The Board considers the decision to be insufficiently reasoned because it "does not discuss the individual features of the claim. It is not clear what the closest prior art is, whether it is the common knowledge of the skilled person or the disclosure of document D1, and what distinguishes the invention from the prior art. [] The minutes of oral proceedings provide a more complete argumentation on inventive step, explaining where each of four possible distinguishing features is disclosed in either document D2 or in a specific passage of document D1. However, this reasoning was not taken over in the decision." 
• Auxiliary request
• The ED had not admitted an auxiliary requests filed during oral proceedings. The Board overrules the ED.
  " The auxiliary request submitted at the oral proceedings [before the Examining Division] was a reaction to this new reasoning and, as stated in the minutes, was considered by the Examining Division to fulfil the requirements of Article 123(2) EPC. Furthermore, it represented a clear improvement over the main request with respect to clarity and restricted the subject-matter of the claim. In the opinion of the Board, given the circumstances of the case, the applicant had the right to have this request admitted, and the complete reasoning regarding inventive step presented, discussed and afterwards included in the written decision."

Summary of Facts and Submissions

I. The appeal lies from the decision of the Examining Division posted on 30 September 2010 to refuse European patent application No. 96915827.8, which was filed as international application PCT/US96/06944 published as WO 96/36923.

[...]

II. The present application, which concerns the configuration of a clinical device in a patient care management system, was filed on 15 May 1996 and entered the European phase on 15 December 1997. The supplementary European search report was completed on 18 February 1999.

Reasons for the Decision

Admissibility of appeal

1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.

Procedural violations

2. It follows from the summary of the first-instance proceedings (see section II above) that their length was affected by unacceptable delays, in particular the delay of more than five years between the supplementary European search report dated 18 February 1999 and the Examining Division's first communication of 7 June 2004, and the delay of more than two years between the applicant's reply of 10 August 2007 to the third communication of the Examining Division and the summons to oral proceedings dispatched on 8 March 2010. These delays were pointed out in letters from the appellant who inter alia repeatedly enquired about the further prosecution of the case.

In the opinion of the Board, the delays cannot be justified by the particular circumstances of the case. The duration of the first-instance proceedings of more than twelve years after entry into the European phase must be regarded as excessive. According to decision T 315/03, even a shorter delay of ten years in a much more complex opposition case amounted to a procedural violation (points 15.5 and 15.6 of decision T 315/03 which was published only in an abbreviated form in OJ EPO 2006, 15). The Board in that case found that such a delay was not "within a reasonable time" and therefore infringed Article 6(1) of the European Convention on Human Rights (ECHR).

The Board's considerations in the present case are also in line with a judgment in the case of Kristiansen and Tyvik AS v. Norway before the European Court of Human Rights (decision of 2 May 2013 in application No. 25498/08), in which the examination and (administrative) appeal proceedings of a patent application at the Norwegian Industrial Property Office took a total of eighteen years before the final decision was issued in a second appeal (which the appellant apparently did not challenge before the Norwegian courts). The initial examination proceedings up to the refusal of the application by the first instance in that case took nearly eleven years (see points 4 to 16). Taking into account the duration of patent protection of twenty years, the European Court of Human Rights found "the length of the administrative proceedings before the patent authorities" in that case to be excessive because it "in effect rendered meaningless any exercise by them [the applicants] of their right of access to a court" (see points 53 to 58 of the decision). Although the Court recognised that the intransigent attitude of the applicant had contributed to the length of the proceedings (points 54 and 56), it reiterated that "in civil length cases examined under Article 6 § 1, the period to be taken into consideration does not necessarily start when the competent tribunal was seized but may also encompass the prior administrative phase" (point 57).

The conclusions of that decision apply all the more to the present case since, in contrast to the case underlying that decision, the proceedings of the first instance in the present case were not affected by any unusual behaviour on the side of the applicant. It is simply not acceptable that under these circumstances the first instance refusal decision was taken more than fourteen years after the filing date and more than twelve and a half years after the entry into the regional phase despite the appellant's repeated attempts to achieve an acceleration of the proceedings.

3. A further issue concerns the reasoning given in the examination proceedings. According to Rule 71(2) EPC any communication under Article 94(3) EPC must contain a reasoned statement covering, where appropriate, all the grounds against the grant of the European patent. These provisions, or the corresponding provisions of the EPC 1973 in force during part of the first-instance proceedings in the present case, have been interpreted by the established jurisprudence as implying that the applicants have to be informed, for each EPC requirement deemed not to be met, of the legal and factual reasons why it was considered not to be met (Case Law of the Boards of Appeal of the EPO, 7th edition 2013, IV.B.2.3.2).

3.1 In the present case, the inventive step argumentation of the first communication simply referred to the abstract and a passage extending over three columns of document D1 (see also section II above). It did not discuss individual features of claim 1 or their correspondence to features disclosed in document D1, and did not identify the differences to the prior art.

The second very short communication simply stated that the data received from the central computer in the system of document D1 included identification data which was checked, and that the check was the crucial feature of the characterising portion of the claim. The third communication did not add any relevant argument, simply stating that two points needed to be clarified "in order to evaluate the technical contribution", and that "an assessment of the technical contribution ( or 'inventive step' ) [...] can be conducted only after the problem solved is clearly fixed in the arguments produced by the applicant and this in order to make them valid".

The communication accompanying the summons to oral proceedings raised objections for lack of clarity of claim 1. The claim did not "respect the distinction between processors and memory (storage) location" and the two processors did not play any role. It was stated that, assuming document D1 as the closest prior art, the feature mentioning the existence of two processors should be included in the characterising part, contrary to the claim wording at the time. Regarding inventive step, the Examining Division argued that the technical contribution of the invention was the avoidance of "errors when programming a clinical device" and that the solution could be derived from the common knowledge. The communication mentioned for the first time that the dependent claims lacked inventive step, but did not include any reasoning.

In the opinion of the Board, the reasoning in those communications was insufficient. The communications did not clearly identify the closest prior art and the distinguishing features of the invention. None of the communications analyses the individual features of the claim or adequately addresses the arguments of the appellant.

4. Regarding the decision itself, the Board notes that Rule 111(2) EPC stipulates that decisions of the EPO open to appeal should be reasoned. According to the established jurisprudence of the Boards of Appeal, in order to fulfil the requirements of Rule 111(2) EPC, a decision should contain, in logical sequence, those arguments which justify its tenor.

As further explained in T 278/00, OJ EPO 2003, 546 (see point 2): "the conclusions drawn from the facts and evidence must be made clear. Therefore all the facts, evidence and arguments which are essential to the decision must be discussed in detail in the decision including all the decisive considerations in respect of the factual and legal aspects of the case". That decision also explains that the reasoned decision is required to enable the appellants, and the board of appeal in case of an appeal, to examine whether the decision could be considered to be justified or not (see also Case Law of the Boards of Appeal of the EPO, 7th edition 2013, III.K.4.2).

4.1 The decision's argumentation with respect to inventive step, essentially that reproduced in section IV above, does not discuss the individual features of the claim. It is not clear what the closest prior art is, whether it is the common knowledge of the skilled person or the disclosure of document D1, and what distinguishes the invention from the prior art. The decision simply refers to column 4, lines 48 to 55 of document D1, which discloses the automatic checking of a patient's medication order by the system. Even though this passage is definitely very relevant, the reasoning does not indicate how the features disclosed in it correspond to claimed features. Some features of the claim, for example the particular configuration of interconnected devices of the patient care management system and the way they interact, are not disclosed in that passage of document D1 and are not further discussed in the decision.

The minutes of oral proceedings provide a more complete argumentation on inventive step, explaining where each of four possible distinguishing features is disclosed in either document D2 or in a specific passage of document D1. However, this reasoning was not taken over in the decision.

4.2 The decision of the Examining Division not to admit the auxiliary request is only briefly mentioned in point 7 of the facts and submissions of the written decision, but not in its reasons. According to that passage, the request did not prima facie overcome the previously raised objection for lack of inventive step (see section IV above). This reasoning is confusing and insufficient. It exclusively mentions Articles 52(1) and 56 EPC, which however cannot serve alone as the legal basis for not admitting a request.

4.3 Finally, the Board notes that the decision does not treat the arguments of the appellant.

5. The Board hence concludes that the duration of the first-instance proceedings was excessive, the written reasoning given in the communications was inadequate, and the contested decision is insufficiently reasoned within the meaning of Rule 111(2) EPC. These deficiencies amount to substantial procedural violations.

6. According to Article 11 RPBA, a Board shall remit a case to the department of first instance (without substantive examination) if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise.

The excessive duration of the examination proceedings in the present case qualifies as such a special reason. Consequently, the Board found that remitting the case directly for formal reasons would be inappropriate.

[...]

Main request

12. Claim 1 of the main request is directed to a patient care management system comprising two computers in a communication network. [...]

19. The system of claim 1 of the main request therefore differs from that of document D1 in that

- the input means of the first programmable computer comprises a bar code reader.

20. Bar code readers allow a more efficient and reliable way of inputting data. The distinguishing feature hence solves the problem of facilitating the input of patient data into the patient care management system.

21. In the opinion of the Board, the claimed solution was obvious for the skilled person at the priority date of the present application.

At that time it was standard practice to use bar codes to identify patients in hospitals and other health-care institutions, as acknowledged in the application on page 10, line 30, to page 11, line 4. It was well known that bar code readers allowed a faster and more reliable way of entering the patient identification than previous solutions, for example using a keyboard. Furthermore, such a use of bar codes is described in document D4 in the context of a patient identification and verification system (see abstract and Figures 2 to 4).

It would thus be obvious for the skilled person to change the input means of the system of document D1 to the commonly known bar code readers in order to improve input of data in the system of document D1.

22. Consequently, the subject-matter of independent claim 1 of the main request does not involve an inventive step (Articles 52(1) and 56 EPC).

Auxiliary Request

23. The subject-matter of independent claim 1 of the auxiliary request differs from that of the main request essentially in that
- the feature "data comprising patient data" has been amended to "patient identity and medication data" (see amendments (i) and (ii), section XI above),
- the second programmable computer verifies that the medication data input is the correct medication for the patient (amendments (i) to (iii)), and
- the clinical device comprises an infusion pump (amendments (iii)).

Admission of the request

24. The Examining Division did not admit the auxiliary request into the proceedings.

According to Article 12(4) RPBA the Board has the power to hold inadmissible requests which were not admitted in the first-instance proceedings. Article 12(4) RPBA is therefore applicable with respect to the auxiliary request in the present case.

The general principles for exercising the discretion to allow amendments are established in the case law (see G 7/93, OJ EPO 1994, 775). In considering whether to overrule the way in which a first instance department has exercised its discretion, the Board should assess whether the Examining Division exercised its discretion taking into account the right principles and in a reasonable way. This assessment presupposes a comprehensible reasoning of the decision not to admit a request.

25. However, in the present case the rejection of the auxiliary request was not properly reasoned in the written decision, as explained in point 4.24.2 above. It can only be deduced from the decision that the Examining Division did not admit the request because it did not consider it to be clearly allowable due to lack of inventive step of its subject-matter.

26. In the Board's view, the reasoning given by the Examining Division in its communications before the oral proceedings was incomplete and almost unintelligible (see also point 3.13.1 above). The communications did not unambiguously identify the closest prior art and the distinguishing features. None of the communications analysed the individual features of the claim or treated the arguments of the appellant. The clarity objections were rather vague. Under these circumstances, it could not be assumed that the applicant had fully understood the objections raised before the oral proceedings and was in a position to file allowable claims in advance of the hearing.

At the oral proceedings the appellant heard for the first time the more complete argumentation on inventive step, including a discussion of individual features.

The auxiliary request submitted at the oral proceedings was a reaction to this new reasoning and, as stated in the minutes, was considered by the Examining Division to fulfil the requirements of Article 123(2) EPC. Furthermore, it represented a clear improvement over the main request with respect to clarity and restricted the subject-matter of the claim. In the opinion of the Board, given the circumstances of the case, the applicant had the right to have this request admitted, and the complete reasoning regarding inventive step presented, discussed and afterwards included in the written decision.

27. In the exercise of its discretion under Article 12(4) RPBA, the Board therefore decides to admit the auxiliary request into the appeal proceedings.

Inventive step

28. As explained for the main request, document D1 discloses most of those features of claim 1 of the auxiliary request which correspond to features of the main request.

[...]

32. Since none of the other prior art documents cited in the proceedings in the present case, documents D2 and D4, suggests such a usage of an infusion pump controlled by a hospital information system for direct and automatic administration of medication to a patient, the Board concludes that the subject-matter of claim 1 is inventive over that prior art.

Remittal to Examining Division

33. Taking into consideration the above reasons, the Board decides to remit the case for further prosecution on the basis of the auxiliary request.

Given the excessively long duration of the examination proceedings, the Examining Division should expedite its final examination of the remitted case.

Reimbursement of the appeal fee

34. According to Rule 103(1)(a) EPC the appeal fee must be reimbursed in full "where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation".

For the reasons given above, the contested decision is to be set aside. The appeal is therefore allowable within the meaning of Rule 103(1)(a) EPC.

According to the established case law, the failure to provide adequate reasoning in a decision in accordance with Rule 111(2) EPC is to be considered a substantial procedural violation justifying the reimbursement of the appeal fee (see Case Law of the Boards of Appeal of the EPO, IV.E.8.3.4). Similarly, long delays occurring in first instance proceedings can amount to a substantial procedural violation (see e.g. Case Law of the Boards of Appeal of the EPO, IV.E.8.3.6). In particular, it has been held that a delay of ten years in first instance opposition proceedings was beyond question a procedural violation (T 315/03, points 15.5 and 15.6).

In line with that jurisprudence, and taking into account the particulars of the present case, the Board finds that the duration of more than twelve years of the first-instance proceedings and the insufficient reasoning in the written proceedings as well as in the decision amounted to procedural violations and affected the entire procedure (see points 3, 4 and 24 to 26 above). The Board therefore concludes that substantial procedural violations have taken place.

The Board is also convinced that the appeal was caused by the deficient treatment of the case in the first-instance proceedings (see points 3, 4 and 24 to 26 of this decision) and that thus the reimbursement of the appeal fee is equitable.

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 on the basis of the auxiliary request.

3. The appeal fee is to be reimbursed.