T 1351/12 - Lack of reasoning

Key points

• The Board fins a substantial procedural violation in a lack of reasoning of the Examining Division.
• The appellant [applicant] correctly noted that the examining division had not appreciated that claim 1 of auxiliary request 3 before it (the present main request) was different from claim 1 of auxiliary request 2 in that it specified the breakthrough event as being selected from the group consisting of diarrhoea, [other diseases]. The subject-matter that was assessed in view of the requirements of Article 83 EPC in paragraph 9 of the decision was therefore only that of claim 1 of auxiliary request 2.
• The reasoning of the examining division or parts of it might have been envisaged to also apply to claim 1 of auxiliary request 3. It cannot be inferred from the decision, however, whether this is the case and, if so, which arguments would apply correspondingly.
• As a result the appealed decision, contrary to Rule 111(2) EPC, is not reasoned to the extent that it refused the application with claims according to auxiliary request 3.

EPO T 1351/12 - link

Reasons for the Decision

1. The appeal is admissible.

The decision under appeal - lack of reasoning

2. The appellant [applicant] correctly noted that the examining division had not appreciated that claim 1 of auxiliary request 3 before it (the present main request) was different from claim 1 of auxiliary request 2 in that it specified the breakthrough event as being selected from the group consisting of diarrhoea, enterocolitis, dermatitis, hypophysitis, panhypopituitarism, rash and pruritis. The subject-matter that was assessed in view of the requirements of Article 83 EPC in paragraph 9 of the decision was therefore only that of claim 1 of auxiliary request 2. The reasoning of the examining division or parts of it might have been envisaged to also apply to claim 1 of auxiliary request 3. It cannot be inferred from the decision, however, whether this is the case and, if so, which arguments would apply correspondingly.

3. As a result the appealed decision, contrary to Rule 111(2) EPC, is not reasoned to the extent that it refused the application with claims according to auxiliary request 3.

4. The failure in the decision to provide adequate reasoning under Rule 111(2) EPC for the rejection of auxiliary request 3 is to be considered as a substantial procedural violation and a fundamental deficiency in the first instance proceedings in the sense of Article 11 RPBA.

5. The board therefore agrees with the appellant that the appealed decision should be set aside.

6. According to Article 11 RPBA a board shall remit a case to the department of first instance if fundamental deficiencies in the first instance proceedings are apparent "unless special reasons present themselves for doing otherwise".

7. The board considers such special reasons to be given in view of the duration of the proceedings.Indeed, it would be inexpedient to remit the case to the examining division without further considering the appellant's appeal because such remittal only might unnecessarily prolong the proceedings even more. Consequently, the board decided to not remit the case without considering the further grounds raised against the decision under appeal.

17. The above considerations lead the board to conclude that in the decision under appeal the examining division came to the finding that the application did not meet the requirements of Article 83 EPC for reasons which the board considers to be insufficient to justify such finding.

18. Since the non-compliance with Article 83 EPC was the sole reason for the refusal of the application, the board accordingly sets aside the decision under appeal also for this additional reason.

Remittal to the examining division for further prosecution (Article 111(1) EPC)

19. The case is remitted to the examining division for further examination as to the requirements of patentability in respect of the main request. This examination shall also involve establishing whether or not there is a causal link between an objective tumor response and the specific breakthrough events recited in claim 1 of the present main request.

Reimbursement of the appeal fee (Rule 103(1)(a) EPC)

20. In view of the substantial procedural violation (see points 4 above), the board considers it equitable to order the reimbursement of the appeal fee in accordance with 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.