T 0224/18 - Disregarding the examples

Key points

• In this examination appeal, the ED considered the (medical) technical effect not credible, because "the technical effect proposed by the applicant cannot be derived from the application, the only reference therein being a study performed by the applicant itself." I note that the application refers to trials with more than 300 subjects.
• The Board considers this to be a "fundamental deficiency" (i.e. substantive, not procedural) and remits the case.
• "it is established case law that the verification of whether or not the claimed subject-matter actually provides the alleged effect must be based on the data in the application []. The assumption of the contested decision to the contrary is an error of judgement on the part of the examining division and constitutes a fundamental deficiency in the examination proceedings."

EPO T 0224/18 -   link

Reasons for the Decision

1. According to Article 11 RPBA, a board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first-instance proceedings.

2. In the contested decision the examining division "dismissed the alleged advantage" of the invention as "the technical effect proposed by the applicant cannot be derived from the application, the only reference therein being a study performed by the applicant itself."

3. As the appellant rightly argues, it is established case law that the verification of whether or not the claimed subject-matter actually provides the alleged effect must be based on the data in the application (see "Case Law of the Boards of Appeal", 8th Edition, I.D.4.6). The assumption of the contested decision to the contrary is an error of judgement on the part of the examining division and constitutes a fundamental deficiency in the examination proceedings. This error of judgement has apparently impeded the examining division from assessing the data provided in the application and hence hindered the proper examination of the application from the very outset. It cannot be ruled out that this error of judgement has even impeded the examining division from properly construing the claimed invention. Thus, the case has to be examined afresh, based on data available in the application as originally filed. Further, the submissions and arguments of the appellant have to be reassessed.

4. The board, however, will not assume the examination of the application itself, since this is the task of the examining division (see G 10/93, point 4 of the reasons). Thus, the board remits the case for further prosecution to the examining division (Article 111(1) EPC; Article 11 RPBA).