T 1592/13 - Not discussing a feature

Key points

• In this examination appeal, the impugned decision did not discuss the feature of "exclusive access" in claim 1 (which was about a software invention).
• " The board is of the opinion that Article 113(1) EPC is also contravened if facts and arguments which, from an objective standpoint, are clearly central to the case and could present a challenge to the decision in question were completely disregarded in the decision." 
• " The board agrees with the appellant that the examining division should have considered this feature in its assessment of novelty and should have addressed the appellant's arguments referring to "exclusive access" [...] the board finds that disregarding the feature of "exclusive access" and the corresponding arguments in the assessment of novelty contravenes both Rule 111(2) and Article 113(1) EPC. If the examining division had been of the opinion that the feature highlighted by the applicant was irrelevant to its decision, then it should have explicitly stated this." 
• " Not discussing the feature in the decision under appeal therefore constitutes a violation of the right to be heard under Article 113(1) EPC." 

EPO T 1592/13 - link

Reasons for the Decision

1. The appeal is admissible.

2. The alleged substantial procedural violation

2.1 The obligation to provide adequate reasoning in a decision in accordance with Rule 111(2) EPC is closely linked to the principle of the right to be heard under Article 113(1) EPC (see T 1340/10, point 1.1).

Pursuant to Rule 111(2) EPC "[d]ecisions of the European Patent Office which are open to appeal shall be reasoned".

According to the decision of the Enlarged Board of Appeal R 8/15 (Catchword 1), "Article 113(1) EPC is infringed if the Board does not address submissions that, in its view, are relevant for the decision in a manner adequate to show that the parties were heard on them, i.e. that the Board substantively considered those submissions. (See Reasons, point 2.2.2.)". The board considers that this principle also applies to the department of first instance.

The board is of the opinion that Article 113(1) EPC is also contravened if facts and arguments which, from an objective standpoint, are clearly central to the case and could present a challenge to the decision in question were completely disregarded in the decision.

2.2 It is apparent from the marked-up copy of the claim requests filed on 15 January 2013 that the feature of "exclusive access", i.e. an advertisement controller capable of executing advertisement control software to obtain exclusive access to one or more remote control key events for taking exclusive control of either a channel switching function or a fast forwarding function, was filed as an amendment in response to the summons issued by the examining division. In the accompanying letter, the appellant extensively argued that the prior art did not disclose "exclusive access".

In section 1 of the decision under appeal, the examining division set out to counter the appellant's arguments by referring to passages of D1, D3 and D4 which disclosed taking exclusive control of channel switching or fast forwarding. In this section, the examining division did not address the feature of "exclusive access". It ignored the particular implementation specified in claim 1 and instead only considered the functionality of taking exclusive control of channel switching or fast forwarding. Similarly, in the analysis of the disclosures of documents D1, D3 and D4, the examining division referred to passages disclosing taking control of channel switching or fast forwarding, but did not cite any passages disclosing "exclusive access".

The board agrees with the appellant that the examining division should have considered this feature in its assessment of novelty and should have addressed the appellant's arguments referring to "exclusive access" (see point XIII(a) above).

Moreover, the board considers that this feature was central to the applicant's case.

2.3 Therefore, in line with the principles enunciated in point 2.1 above, the board finds that disregarding the feature of "exclusive access" and the corresponding arguments in the assessment of novelty contravenes both Rule 111(2) and Article 113(1) EPC. If the examining division had been of the opinion that the feature highlighted by the applicant was irrelevant to its decision, then it should have explicitly stated this.

Not discussing the feature in the decision under appeal therefore constitutes a violation of the right to be heard under Article 113(1) EPC.

[...]

3.5 In view of the above, the board finds that claim 1 of the main request and the first, second and third auxiliary requests does not meet the requirements of Article 84 EPC 1973.

4. Request for remittal (Article 111(1) EPC)

Since the board does not agree with the appellant that the amended claims overcome the objection raised under Article 84 EPC 1973 (see point XIII(f) and section 3 above), this request serves no purpose and therefore needs not be considered by the board.

5. Since none of the appellant's requests is allowable, the appeal is to be dismissed.

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

6.1 According to Rule 103(1)(a) EPC, the reimbursement of the appeal fee is ordered in the event where the board of appeal deems an appeal allowable, if such reimbursement is equitable by reason of a substantial procedural violation.

6.2 Since the appeal is not allowable, the request for reimbursement of the appeal fee is refused.

Order

For these reasons it is decided that:

1. The appeal is dismissed.

2. The request for reimbursement of the appeal fee is refused.