T 0036/19 - Grant after 20 years possible

Key points

• In this examination appeal, the divisional application was filed in 2010, the parent having a filing date of 28.01.1999.
• The Board: “As the term of a European patent amounts to 20 years from the date of filing (Article 63(1) EPC), a patent which may eventually be granted for the present application will have already expired. The Board nevertheless considers that the appellant still has a legitimate interest in the continuation of the grant and the appeal proceedings. Since a European patent application already confers rights after its publication pursuant to Article 67 EPC, a grant decision by the European Patent Office, even if taken only after expiry of the patent term, may become relevant for the determination of these rights.”
• The Board does not indicate any legal basis and the EPC does not contain any provision for terminating the grant procedure without a grant, i.e. in effect refusing the application, in case the applicant has no ‘legitimate interest’, but Art.125 EPC may, of course, take care of this if the national laws of many Contracting States have such a requirement. 
• Pending referral G4/19 (double patenting; T0318/14, r.7) touches on this issue, G1/05 r.13.4 mentions that: “The [Enlarged] Board accepts that the principle of prohibition of double patenting exists on the basis that an applicant has no legitimate interest in proceedings leading to the grant of a [] patent”.
• I note that applicants pay significant renewal fees and other fees to the EPO for any pending application, so at least subjectively they have some interest to incur the costs of the EPO grant proceedings. 

EPO T 0036/19 - link

Reasons for the Decision

Admissibility of appeal


1. The appeal complies with the provision referred to in Rule 101 EPC and is therefore admissible.


Procedural issue


2. The filing date of the present (divisional) application is 28 January 1999. As the term of a European patent amounts to 20 years from the date of filing (Article 63(1) EPC), a patent which may eventually be granted for the present application will have already expired. The Board nevertheless considers that the appellant still has a legitimate interest in the continuation of the grant and the appeal proceedings. Since a European patent application already confers rights after its publication pursuant to Article 67 EPC, a grant decision by the European Patent Office, even if taken only after expiry of the patent term, may become relevant for the determination of these rights.


The application


3. The application relates to World Wide Web (WWW) page retrieval and to methods for performing such retrieval using a "minimally restrictive" syntax (description of the application as filed, page 1, lines 3 and 4).


[...]


10. Thus, the present invention relates to a method of enabling a user to enter a "substantially" free-form designation of a WWW site, preferably in the user's native language, and directly obtain the information from the site, without the necessity of using an exact site address (description, page 11, lines 10 to 13).

[...]


Third auxiliary request

[...]


In the Board's understanding the new feature implies that, according to claim 1, the entered information is "translated" to a URL address by automatically submitting it over the Internet as a query to a web search engine and retrieving the address of a single hit (i.e. search result). [...]


19.3 Hence, the subject-matter of claim 1 is not rendered obvious by document D3.

Remittal


20. The following documents, cited in the communication of the Examining Division of 21 April 2016, have not been considered in the decision under appeal:


D10: "ISYS HindSite - Text Search & Retrieval Browser Plug-in", 10 December 1997, retrieved from https://web.archive.org/web/19971210161525/http://www.isysdev.com/products/hindsite.htm;


and


D11: C. Thomas and G. Fischer: "Using Agents to Improve the Usability and the Usefulness of the World-Wide Web", Proceedings of the Fifth International Conference on User Modeling, 1996.


The Examining Division might consider these documents for assessing novelty and inventive step of the third auxiliary request.


20.1 Furthermore, the feature added to claim 1 of the third auxiliary request was taken from the description and may not yet have been searched.


20.2 Therefore the case is to be remitted to the department of first instance for further prosecution on the basis of the third auxiliary request. The Board expects that in view of the filing date of the present application (see point 2 above) the department will deal with it expeditiously.

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.