T 2351/16 - Refusal after single Communication

Key points

• In this examination appeal, the ED had issued a single Communication (a merely formal one, referring to the search report, in 2010) and the applicant had filed a response without a request for oral proceedings. The EPO's next action was a refusal decision in 2016.  The Board considers this to be fine.
• " The fact that the examining division issued a decision of refusal after only one communication under Article 94(3) EPC as such does not constitute a violation of the appellant's right to be heard. " 
• " Professional representatives have to be aware that, in order to avoid a refusal after only one communication, a precautionary request for oral proceedings should be filed together with the response to the communication (at the latest)." 
• " The fact that the application was refused more than five years after the appellant's response to the communication under Article 94(3) EPC does not lead to another conclusion." (the Board finds the delay "regrettable").
• The fact that the Communication was just a formal communication is also no problem (under the then applicable rules). " The fact that the communication is merely "formal", in that it refers to the European search opinion, does not mean that it is not a valid communication under Article 94(3) EPC having all the legal effects of such a communication." 
• The Board finds a substantial procedural violation because the ED refers in the decision for the first time to a paragraph in the Guidelines. "the boards considers the assertion that the appellant could not be surprised by an additional argument in support of the division's objection to be highly questionable." "The refusal of an application based on a reasoning expressed for the first time in the decision constitutes a violation of the applicant's right to be heard and, therefore, a substantial procedural violation." 
• As a comment, this means that applicants have to request oral proceedings just to get a preliminary opinion as second Communication rather than an immediate refusal, even if there is no interest in actually attending oral proceedings. Nevertheless, the EPO will have to book rooms for many oral proceedings which are cancelled in due time because of this (existing) case law. The same could of course be said for guaranteeing a later Communication, but later in the procedure applicants may be less interested in such a further Communication.
• The substantive issue was added subject-matter, Art. 76 EPC. The ED had reasoned  that: " what needs to assessed is whether the man skilled in the art could directly and unambiguously derive from the parent application as filed that it also comprises the scope of protection now claimed in the present divisional. Art. 69 defines that this scope of protection is defined in the claims." The ED's objection is that the now-claimed precursor plate is only disclosed in the parent application as being used in the inventive process, not as invention as such. The ED had argued that: " In the parent application, the plate per se is never mentioned as being the invention in the original application, it is never stated to, in itself, solve a particular problem, and it is always mentioned in combination with a specific method for engraving it" 
• The Board explains that: " The board considers that the reference to the "scope of protection" and to Article 69 EPC is unfortunate and misleading because it may suggest that the scope of protection of the divisional application has to be comprised by the scope of protection of the earlier application, which is incorrect. The only requirement that has to be ascertained when compliance with Article 76(1) EPC is examined is whether the subject-matter of the divisional application extends beyond the content of the earlier application as filed or not. The scope of protection of the divisional application and its relationship with the scope of protection of the earlier application is irrelevant in this context." 

EPO T 2351/16 -  link

Reasons for the Decision

1. Applicable law

The divisional application under consideration was filed on 29 October 2004. According to Article 7 of the Act revising the EPC of 29 November 2000 (OJ EPO 2007, Special edition No. 4, 217) and the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the EPC of 29 November 2000 (OJ EPO 2007, Special edition No. 4, 219), Article 111 EPC 1973 applies in the present case. Reimbursement of the appeal fee is governed by Rule 67 EPC 1973 (see decision J 10/07, point 7 of the reasons, published in OJ EPO 2008, 567).

2. Substantial procedural violation

2.1 Refusal after a single communication

The fact that the examining division issued a decision of refusal after only one communication under Article 94(3) EPC as such does not constitute a violation of the appellant's right to be heard. According to the jurisprudence of the boards of appeal, an examining division may refuse an application after a single communication if it does not consider that there is a prospect of a positive result. The refusal of an application after the first communication is justified if decisive objections against patentability remain, particularly where the claimed subject-matter has not been substantially modified (see "Case Law of the Boards of appeal of the EPO", 8th edition, 2016, item IV.B.2.5.1).

Professional representatives have to be aware that, in order to avoid a refusal after only one communication, a precautionary request for oral proceedings should be filed together with the response to the communication (at the latest).

In the present case, the appellant did not file such a request, but requested a further communication. However, the appellant was not entitled to such a communication; Article 94(3) EPC only requires the examining division to invite the applicant "as often as necessary" to file his observations and possibly to amend the application.

2.2 Excessive delay

The fact that the application was refused more than five years after the appellant's response to the communication under Article 94(3) EPC does not lead to another conclusion. It is indeed regrettable that the decision was taken more than five years after the written submission of the appellant (and more than two years after the appellant's enquiry as to when a communication from the examining division could be expected). However, these circumstances do not alter the legal situation in respect of the requirements of Article 94(3) EPC.

2.3 Reasons mentioned for the first time in the decision

Item 7 of the grounds for the decision contains the following statement:

"It cannot come as a surprise to the applicant that in view of his reply, in addition to the arguments already on file, the division would refer to guidelines H V-2 point 3.1. in support of its position."

Apart from the fact that the reference to the Guidelines appears to be erroneous (H-V,3.1 being meant), the boards considers the assertion that the appellant could not be surprised by an additional argument in support of the division's objection to be highly questionable.

As a matter of fact, the cited passage of the Guidelines reproduces the criteria for deleting claim features as developed by decision T 331/87 (three-point "essentiality test"). There is no reference whatsoever to the essentiality test in the European search opinion on which the communication pursuant to Article 94(3) EPC was based. The applicant could not expect the application to be refused on the basis of such arguments, because it had never been offered the opportunity to comment on them.

The refusal of an application based on a reasoning expressed for the first time in the decision constitutes a violation of the applicant's right to be heard and, therefore, a substantial procedural violation.

2.4 Further issues

2.4.1 Formal communication

The appellant pointed out that the Communication pursuant Article 94(3) EPC was just a formal communication. It argued that its response to this communication could and should have been treated in the same way as a response to a communication pursuant to Rule 70a(1) EPC, which entered into force on 1 April 2010, and which reads:

"In the opinion accompanying the European search report the EPO shall give the applicant the opportunity to comment on the extended European search report and, where appropriate, invite him to correct any deficiencies noted in the opinion accompanying the European search report and to amend the description, claims and drawings within the period referred to in Rule 70, paragraph 1."

The board is unable to endorse this argument. Rule 70a EPC was inserted into the Implementing Regulations by decision of the Administrative Council CA/D 3/09 of 25 March 2009 (OJ EPO 2009, 299) and entered into force on 1 April 2010. Article 2(2) of this Decision reads:

"(2) ... new Rule 70a ... shall apply to European patent applications for which the European search report or the supplementary European search report is drawn up on or after 1 April 2010."

In the present case the extended European search report was communicated to the applicant by letter dated 11 March 2010. It is, therefore, clear that Rule 70a EPC does not apply to the application under consideration.

Moreover, when issuing its Communication pursuant to Article 94(3) EPC, the examining division has offered the applicant the possibility to file observations and to correct any deficiencies.

The fact that the communication is merely "formal", in that it refers to the European search opinion, does not mean that it is not a valid communication under Article 94(3) EPC having all the legal effects of such a communication.

2.4.2 Statement on amendments

The European search opinion contains the following statement:

"4. At least some of the objections raised above are such that there appears to be no possibility of overcoming them by amendment. Refusal of the application under Article 97(2) EPC is therefore to be expected."

In this respect the opinion appears to be somewhat self-contradictory because in the ante-penultimate paragraph on page 2 the possibility of remedying the defects by means of amendments is explicitly suggested. This notwithstanding, the board is unable to see why the statement of point 4 would result in a further violation of the appellant's right to be heard because the communication under Article 94(3) EPC, which was issued subsequently, clearly and unambiguously invited the appellant to file its observations and amendments.

3. Added matter (Article 76(1) EPC)

3.1 Article 76(1) EPC reads as follows:

"A European divisional application shall be filed directly with the EPO in accordance with the Implementing Regulations. It may be filed only in respect of subject-matter which does not extend beyond the content of the earlier application as filed; in so far as this requirement is complied with, the divisional application shall be deemed to have been filed on the date of filing of the earlier application and shall enjoy any right of priority."

In order to comply with Article 76(1), second sentence, EPC, the subject-matter of the divisional application must not extend beyond the content of the earlier application as filed.

In the decision under appeal, the examining division made the following statement:

"The division considers that what needs to assessed is whether the man skilled in the art could directly and unambiguously derive from the parent application as filed that it also comprises the scope of protection now claimed in the present divisional. Art. 69 defines that this scope of protection is defined in the claims." (point 8.3, second paragraph)

The board considers that the reference to the "scope of protection" and to Article 69 EPC is unfortunate and misleading because it may suggest that the scope of protection of the divisional application has to be comprised by the scope of protection of the earlier application, which is incorrect. The only requirement that has to be ascertained when compliance with Article 76(1) EPC is examined is whether the subject-matter of the divisional application extends beyond the content of the earlier application as filed or not. The scope of protection of the divisional application and its relationship with the scope of protection of the earlier application is irrelevant in this context.

Therefore, the board examines whether the subject-matter of the independent claims is within the content of the earlier application or not.

3.2 Claim 1

3.2.1 Claim 1 is directed at a precursor plate which is suitable for the manufacture of intaglio printing plates for intaglio printing of sheets of security papers and which comprises a laser-engravable polymer layer.

The earlier application discloses "... a precursor of an intaglio printing plate, which is thereafter further processed by metal depositions as known in the prior art" (page 4, antepenultimate paragraph). The earlier application as a whole concerns the "field of intaglio printing for the production of security papers, especially banknotes" (page 1, first paragraph). The description of Figure 9a mentions that "the engraving tool is a YAG laser and the engraved plate is a polymer plate which serves as a precursor of the intaglio printing plate" (page 10, beginning of second paragraph). Considering these elements, the board is satisfied that the earlier application discloses a precursor plate which is suitable for the manufacture of intaglio printing plates for intaglio printing of sheets of security papers and which comprises a laser-engravable polymer layer.

3.2.2 The examining division agreed that such a plate was disclosed in the earlier application. It nevertheless found the subject-matter of claim 1 to extend beyond the content of the earlier application and justified this conclusion as follows:

"... in the parent application, the plate per se is never mentioned as being the invention in the original application, it is never stated to ,in itself, solve a particular problem, and it is always mentioned in combination with a specific method for engraving it.

Throughout the parent application, it is only this specific method for engraving the plate which is described as being the object of the invention and solving the technical problem which is stated to be "the reducing of the processing time and cost of the production of intaglio printing plates by circumventing the tedious steps of engraving vignettes and portraits by hand."

Claiming the precursor plate per se, without the engraving method, therefore has to be considered as a removal of a feature (the specific method for engraving it) from the claim and the guidelines H V-2 [sic] point 3.1. apply." (see paragraphs 5 to 7 on page 9 of the grounds of the decision)

As the criteria of the essentiality test laid down in the Guidelines were considered not to have been met, the examining division reached the conclusion that the divisional application did not meet the requirements of Article 76(1) EPC.

3.2.3 The present board (in different composition) has repeatedly expressed its point of view that the "essentiality test" based on decision T 331/87 and reproduced in the Guidelines H-V 3.1, is not in line with the actual jurisprudence of the Enlarged Board of appeal and should not be used anymore (see in particular decision T 1852/13, point 2 of the reasons).

The board considers that the correct test to be applied is the "gold standard" reaffirmed in decision G 2/10 of the Enlarged Board of appeal (OJ EPO 2012, 376). In other words, it is to be examined whether the skilled person would derive the claimed subject-matter directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the earlier application.

The fact that in the earlier application, the plate per se is never mentioned as being the invention and is never stated to solve a particular problem appears not to be relevant in the present context. Such considerations may become relevant in the context of inventive step but are not decisive when compliance with Article 76(1) EPC is to be examined.

3.2.4 The examining division also pointed out that in the earlier application the plate as such is always mentioned in combination with a specific method for engraving it. This statement appears to refer in particular to the disclosure of the second paragraph on page 10 of the original earlier application: [...]

3.2.5 Therefore, the board reaches the conclusion that the subject-matter of claim 1 does not extend beyond the content of the earlier application as filed.

Strictly speaking the decision under appeal was only based on an objection against claim 1. For the sake of completeness, the board will also consider the subject-matter of the other independent claims from the point of view of compliance with Article 76(1) EPC: [...]

4. Remittal to the first instance

Considering that the examining division has not yet examined the patentability of the claimed subject-matter, it appears appropriate to refer the case back to the examining division for further prosecution.

5. Reimbursement of the appeal fee

The board finds the appeal to be allowable. Moreover, reimbursement of the appeal fee is equitable by reason of a substantial procedural violation (see point 2.3 above). Therefore, in application of Rule 67 EPC 1973, the board orders the reimbursement of the appeal fee.

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 allowed.