T 1215/20 - 3GPP document

Key points

• This is an examination appeal. The Board seems to remit the case to the Examining Division to decide again on whether D1 was public at the relevant date or not.
• D1 is " 3GPP TSG RAN WG2 #64, R2-086821, November 2008." The priority date is in February 2009.
• The applicant argues that: " the meeting on 10 to 14 November 2008 was an internal meeting of the 3GPP cannot be considered public as only participants of the 3GPP standardization committee were attending" 
• The Board: " the decision under appeal does not address the applicant's arguments in this respect (and there was also no communication issued in that regard). It follows that the examining division did not respect the appellant's right to be heard as to the matter of public availability of document D1." 
• Turning to the merits of the case, the Board observes the following: " the examining division could and should have explained how it assessed the public availability of document D1. The board takes note of the specific indications compiled in the valid version of the Guidelines for Examination (cf. Guidelines G-IV, 7.6 "Standards and standard preparatory documents" in the applicable version of November 2019), and the available case law on the public availability of technical standards, such as T 1469/10, Reasons 2.3 (relating to 3GPP standards: "... the respective dates ('timestamps') indicated on the 3GPP document lists reliably correspond to the dates on which a certain document was uploaded to the 3GPP file server and thus was available on the server to be accessed by the public ..."), or e.g. T 2239/15 (see Catchword). Besides, if the examining division retrieved the 3GPP document from one of the EPO's in-house databases mentioned in the Guidelines, rather than from the Internet, such databases would usually record the specific date in which the document was downloaded from a 3GPP server." 
• To cite the Guidelines: " While documents in the EPO's in-house databases are regarded as being available to the public" - this must probably be understood in the context of the paragraph.

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t201215eu1.html

1.5 According to the appellant, the examining division allegedly stated that it was common to publish contributions on the 3GPP FTP-server prior to or simultaneously with a meeting (statement of grounds of appeal, page 4, last paragraph).

However, the file contains no record of such statement. The board can only speculate whether or not any such statement was made during the telephone conversation held on 23 October 2019. In any event, it was not mentioned in the corresponding minutes. In fact, there is no evidence at all on file that the examining division ever considered the question of public availability of D1. In particular, the decision under appeal does not address the applicant's arguments in this respect (and there was also no communication issued in that regard). It follows that the examining division did not respect the appellant's right to be heard as to the matter of public availability of document D1.

1.6 However, the examining division could and should have explained how it assessed the public availability of document D1. The board takes note of the specific indications compiled in the valid version of the Guidelines for Examination (cf. Guidelines G-IV, 7.6 "Standards and standard preparatory documents" in the applicable version of November 2019), and the available case law on the public availability of technical standards, such as T 1469/10, Reasons 2.3 (relating to 3GPP standards: "... the respective dates ('timestamps') indicated on the 3GPP document lists reliably correspond to the dates on which a certain document was uploaded to the 3GPP file server and thus was available on the server to be accessed by the public ..."), or e.g. T 2239/15 (see Catchword). Besides, if the examining division retrieved the 3GPP document from one of the EPO's in-house databases mentioned in the Guidelines, rather than from the Internet, such databases would usually record the specific date in which the document was downloaded from a 3GPP server.

1.7 As lack of inventive step, starting from D1, was the sole reason for rejecting the main request, the failure to address the appellant's arguments in the decision under appeal amounts to a substantial procedural violation. To review the inventive-step reasoning in the decision under appeal, the board would be forced to perform an entirely new evaluation of the matter of public availability of D1. This would however go against the primary object of appeal proceedings to review the decision under appeal in a judicial manner (cf. Article 12(2) RPBA 2020).