27 Mar 2018

T 1922/17 - Decision according to the state of the file

Key points

  • In this case, the ED had refused the application with a decision according to the state of the file, which decision referred to an earlier communication for the reasons. The Board finds this a procedureal violation, because the claims had been amended after the communication.
  • " As the communication dated 2 November 2015 is not based on the latest request of the applicant, particularly with regard to the amended description filed on 4 November 2016, the reference to this communication cannot be accepted as sufficient reasoning underlying the appealed decision." 



EPO T 1922/17 - link




Reasons for the Decision
1. Necessity to provide adequate reasoning in a decision
1.1 Rule 111(2) EPC embodies the general principle of law that appealable decisions must be reasoned. It states inter alia: "Decisions of the European Patent Office which are open to appeal shall be reasoned". The function of appeal proceedings is to give a judicial decision upon the correctness of a separate earlier decision (G 9/91, OJ 1993, 408, reasons 18; T 1182/05, reasons 3). The reasoning given in a decision open to appeal has to enable appellants and the Boards of Appeal to examine whether the decision was justified or not. In other words, it is not up to the Board or the appellant to speculate as to what might be the intended meaning behind the reasoning. A reasoned decision meeting the requirements of Rule 111(2) EPC is accordingly also a prerequisite for the examination of the appeal (see also T 1182/05, reasons 3).


A 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 fee for appeal (see e.g. Case Law Book, 8th edition IV.E.8.4.4).
1.2 After the withdrawal of the request for oral proceedings, the examining division issued a decision, noting that the applicant had requested a decision according to the state of the file.
Nevertheless a request for a decision on the state of the file cannot be construed as a waiver of the right to a reasoned decision, because the content and rationale of Rule 111(2) EPC, to enable appellants and the Boards of Appeal to examine whether the appealed decision was justified, also applies to this procedural constellation.
2. Requirements for adequate reasoning
2.1 It is the consistent case law of the Boards of Appeal that a "reasoned" decision should deal with all important issues of dispute and therefore must include considerations in respect of the factual aspects of the case to enable the Board to assess, on the basis of the reasoning given in the decision under appeal, whether the conclusion drawn in the appealed decision was justified or not. In particular, final decisions have to take account of documents received in response to EPO communications (see also T 1997/08, reasons 4.4) which can be comments and/or requests. These requirements are not fulfilled in the present case.
2.2 The reasoning in the decision under appeal does not state any specific objections justifying the refusal of the application.
Instead the decision mentions the communication dated 2 November 2015 by stating that the applicant had been informed of the reasons why the application does not meet the requirements of the EPC therein. The communication dated 2 November 2015 had been reasoned as regards the amendments in the description made by the applicant, but this reasoning was based on description pages 1-4, 6, 8-17 and 19 submitted by the applicant on 1 April 2015, as well as pages 5, 5a, 7 and 18 submitted on 31 August 2015. Thus, this communication did not take into account the latest amendments in the description made by the applicant with its letter dated 4 November 2016 which included pages 1 to 15 and did not only contain minor amendments compared to the former versions.
As the communication dated 2 November 2015 is not based on the latest request of the applicant, particularly with regard to the amended description filed on 4 November 2016, the reference to this communication cannot be accepted as sufficient reasoning underlying the appealed decision.
2.3 In the appealed decision the examining division further states that the "applicant had not filed comments or amendments in reply to the latest communication". This wording however does not provide a clear and precise reference to any reasoning in the "latest communication". But even if this were interpreted as being an implicit reference to the reasoning in the communication dated 8 December 2016, which at that stage was the "latest" communication on file, this would mean that the appealed decision referred to two different communications: the communication dated 2 November 2015 and the communication dated 8 December 2016 each dealing with different amendments of the description. Hence the Board would still have had to examine both communications each dealing with different amendments in the description, for facts, arguments and provisions to ascertain which reasons might have justified the refusal of the application. This would leave it to the Board to speculate as to which reasons would still apply to the request on file at the time the decision was taken. This is found to be at odds with the principle that, for a decision to be reasoned according to Rule 111(2) EPC, it must be self-contained (T 177/15, reasons 4, 5; T 963/02, reasons 2.1).
Moreover, a decision that is merely reasoned by reference to a preceding communication only provides sufficient reasoning if the communication itself fulfils the conditions of Rule 111(2) EPC (see e.g. T 963/02, reasons 2.1). This is not the case here because it is not possible to derive specific reasoning either from the communication dated 8 December 2016 itself or from the copy annexed to it, in which the results of the telephone call made by one of the examiners on 28 November 2016 was minuted.
In the communication dated 8 December 2016 itself no specific objections were addressed at all. In the annexed copy that minuted the telephone call it is merely stated that "The Examining Division does not approve the proposed amendments to the description filed on 04-11-2016". Thus, even though the examining division apparently addressed the amendments of 4 November 2016 in the telephone call on 28 November 2016 (n.b. the appellant has not disputed this), no information as to the specific objections (facts, arguments or provisions) is given in the annexed copy dated 8 December 2016.
2.4 Sufficient reasoning for the appealed decision also cannot be found in the communication dated 5 July 2016. First of all, no specific reference to this communication has been made in the decision under appeal. It is neither mentioned explicitly nor is it implied by the reference to the "latest communication" which at that stage had not been the communication dated 5 July 2016 but that dated 8 December 2016. More importantly, this communication did not take into account the amendments that had been made by the applicant in the meantime with its letter dated 4 November 2016.
3. Substantial procedural violation
3.1 Even though the Board recognises that the examining division spent time and effort, on several occasions, to make clear to the appellant which amendments to the description were not acceptable in order to bring the description into consistency with the amended claims, the failure to provide adequate reasoning in the decision in accordance with Rule 111(2) EPC results, however, in a substantial procedural violation.
The Board cannot examine the appealed decision without speculating if the reasons given in the communication dated 2 November 2015 relating to the description dated 1 April 2015 and 31 August 2015 also apply in some way to the description pages filed on 4 November 2016 that were filed to replace former descriptions. As stated by the Board in its communication under Article 15(1) RPBA (see item 3.1 thereof), and notwithstanding the Board's own comments made under item 3.2 of that same communication, the Board is not even in a position to know whether the decision was ultimately based on a failure to meet the requirements of Article 84 EPC as had been the case with earlier amendments (and, if so, for what reasons precisely) or indeed whether possibly some other aspect had led to the refusal.
Thus, insufficient reasoning is present in the decision under appeal since there is no reasoning based on the latest version of the description which was on file. This therefore constitutes a substantial procedural violation.
3.2 Due to the foregoing, and as no special reason is apparent to do otherwise, the case is to be remitted to the examining division for further prosecution (Article 11 RPBA).
3.3 Further, by reason of the procedural violation, it is equitable to reimburse the appeal fee (Rule 103(1)a) EPC).
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the examining division for further prosecution.
3. The appeal fee is reimbursed.

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