11 Sep 2019

T 1895/13 - Rule 63 and no refund search fee

Key points

  • In this examination appeal of this Euro-PCT application, the Supplementary Search Report gave a declaration under Rule 63 EPC with Rule 164(2) and (3) EPC (referred to as the "no-search declaration" by the Board).
  • The applicant requests a refund of the search fee because no search was carried out.
  • The refund is refused. "the Board can only apply the EPC and associated provisions as they are. Article 9(1) Rules Relating to Fees provides for a refund of the search fee only in the case that the European patent application is withdrawn at a time when the Office has not yet begun to draw up the Search Report, but not in the case of a no-search declaration under Rule 63 EPC." 
  • The applicant had also requested interpretation (from and to German) for the oral proceedings before the Examing Division although the language of the proceedings was English. By not providing for the interpretation, the EPO had committed a substantial procedural violation, according to the applicant.
  • " The Board, however, indicated that even if a procedural violation might have occurred, it did not appear to have substantially affected the appellant's right to be heard (Article 113(1) EPC). The appellant had not set out any actual communication problem caused by the lack of official interpretation, neither at the oral proceedings before the examining division nor with its statement setting out the grounds of appeal. Instead, the appellant addressed only hypothetical problems that might occur in general if the right to exchange arguments in a desired language was restricted." I'm not sure what the requested remedy was, but the case is not remitted. 


EPO T 1895/13 -  link

Summary of Facts and Submissions


VII. The appellant argued that the examining division erroneously denied inventive step, contested that no search was performed and therefore argued that the search fee be refunded. Finally, the appellant argued that the examining division violated it's right to be heard by refusing to provide interpretation during oral proceedings before the first instance.


Reasons for the Decision
Main request

1. Article 56 EPC - Inventive step

The Board agrees with the decision under appeal that the subject-matter of independent claim 1 lacks an inventive step for essentially the same reasons.

1.1 The claim is directed to a mix of technical and non-technical features. The Board does not dispute that the system according to claim 1 appears in a technical context. The system involves technical means such as a processor, a user interface and a communication network and, therefore, has technical character. Accordingly, the claimed subject-matter is an invention in the sense of Article 52(1) EPC (see T 258/03 "Auction method/HITACHI").

1.2 However, the question of inventive step requires an assessment of whether the invention makes a technical contribution over the prior art. Features which do not make such a contribution cannot support the presence of an inventive step (see T 641/00 "Two identities/COMVIK", Headnote I).
[..]

No-Search declaration
2. While the International Search Report cited several prior art publications, neither the Supplementary Search Report nor the Search Opinion cited any further prior art publication. Instead, the Supplementary Search Report gave a declaration under Rule 63 EPC with Rule 164(2) and (3) EPC (referred to as the "no-search declaration" by the Board).
3. Regarding the examining division's reliance on a general purpose data processing system and in contrast to the appellant's arguments, the Board accepts such prior art as notorious, i.e. no documentary evidence had to be adduced by the examining division in this respect (T 1411/08, points 4.1, 4.2). In particular, the examining division was not required to prove the pre-existence of features which even the application itself fails to disclose (such as technical details of a processor, communication networks or a user interface).
[...]
4.2 In the absence of any technical contribution beyond the straight-forward computer-implementation, the Board judges that the subject-matter of claim 1 does not involve an inventive step (Article 56 EPC) in view of the skilled person's common general knowledge or in view of D1.
[...]

Refund of the Search Fee

7. Regarding the request for a refund of the European search fee in the absence of any cited document, the Board can only apply the EPC and associated provisions as they are. Article 9(1) Rules Relating to Fees provides for a refund of the search fee only in the case that the European patent application is withdrawn at a time when the Office has not yet begun to draw up the Search Report, but not in the case of a no-search declaration under Rule 63 EPC.

Furthermore, the search division can be assumed to have analysed the set of claims before taking the decision to issue a no-search declaration, and, hence, it cannot be argued that the EPO has been unjustly enriched. The Board is also not competent to decide on claims for compensation in respect of a loss or damage allegedly caused by the EPO in the course of patent grant proceedings (J 14/87, OJ EPO 1988, 295).

Reference is made to decision T 2249/13, which concerned a similar situation (see in particular points 24 to 29 of the reasons). The Board concurs with the reasoning in this decision.

Therefore, the request for a refund of the search fee is inadmissible.

Language of the oral proceedings before the first instance

8. Oral proceedings before the first instance were held in the absence of interpreters although the appellant's representative had informed the examining division that he intended to speak and hear in the German language and had requested simultaneous translation. The examining division saw no good reason to depart from the language of the proceedings (English), but offered to clarify its comments in German where necessary while declining to act officially as interpreters.

8.1 The appellant argued that Rule 4(1) EPC unambiguously allowed a party to both speak and hear an official language chosen by the party and announced in good time. The examining division had no discretion to refuse interpretation in such a situation. By refusing to provide interpretation, the examining division also infringed the appellant's right to be heard according to Article 113(1) EPC which reflects the principle of procedural fairness. Discussing the invention in a common language served procedural economy and prevented misunderstandings. By dismissing the appellant's request for interpretation, the examining division accepted the possibility of a misdirected discussion. The dismissal limited the appellant's right to present its arguments in a desired manner in accordance with procedural regulations of the EPC. Despite a specific complaint by the appellant, the examining division was not willing to conform to those provisions, which suggested that the division was biased at least with respect to the language issue.

8.2 Again reference is made to decision T 2249/13, which concerned a comparable situation (see in particular point VII c)). In that case, the Board stated that in effect, the appellant's allegation was that the examining division infringed Rule 4(1)(5) EPC by declining to provide official interpretation when the appellant's representative had filed a timely request to speak and hear an official language other than the language of the proceedings.

The Board, however, indicated that even if a procedural violation might have occurred, it did not appear to have substantially affected the appellant's right to be heard (Article 113(1) EPC). The appellant had not set out any actual communication problem caused by the lack of official interpretation, neither at the oral proceedings before the examining division nor with its statement setting out the grounds of appeal. Instead, the appellant addressed only hypothetical problems that might occur in general if the right to exchange arguments in a desired language was restricted.

Indicating a potential problem does not mean that the problem actually occurred. The burden of proof lies with the appellant, who has not satisfied its obligation to submit facts, which allows an assessment of whether there was a substantial violation of rights.

9. For the aforementioned reasons, the Board cannot identify any substantial procedural violation by the examining division. Furthermore, the Board is not competent to revise acts (including a potential procedural violation) of the search division or to remit a case to it (Article 106(1) EPC). The Board does not need to remit the case to the department of first instance, but is able to exercise its power within the competence of the examining division (Article 111(1) EPC), in particular to assess inventive-step and to take a corresponding decision on the substance of the present case.

Order

For these reasons it is decided that:

1) The appeal is dismissed.

2) The request to remit the case to the department of first instance and the request to refund the European search fee are rejected.

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