T 2481/19 - Length of proceedings

Key points

• “In its examination of the appeal case, the board identified some deficiencies in the proceedings before the examining division and in the decision under appeal.”
•  “deficiency concerns the excessive length of the proceedings. The application, which claims priority from a Korean application filed on 23 November 2002, was filed as a European application on 24 November 2003 and refused at the oral proceedings on 13 November 2018. Between the applicant's letter of 22 March 2010 and the summons to oral proceedings eight years later on 8 May 2018 the examining division did not issue any office actions. ”
• “In line with a number of decisions of the Boards of Appeal, including T 823/11 of 21 December 2015, T 2377/17 of 3 December 2018 and T 2707/16 of 11 December 2018, such delays may constitute a procedural violation.”
• “According to decision T 2707/16, "a reimbursement of the appeal fee in view of unreasonable delays in first-instance proceedings should be regarded as equitable only where the applicant has made clear by some action that [it] did not tacitly agree with the stagnation of the proceedings" (Reasons 36).”
• “During the long examination proceedings, it did not request accelerated processing of the application or otherwise protested against the long duration of the examination.”
• “Since [the above mentioned] criterion is not met in the case in hand, it is irrelevant whether the unreasonable examination delays constituted a substantial procedural violation.”

T 2481/19 -

https://www.epo.org/law-practice/case-law-appeals/recent/t192481eu1.html

6. In its examination of the appeal case, the board identified some deficiencies in the proceedings before the examining division and in the decision under appeal.

[...]

6.3 Another deficiency concerns the excessive length of the proceedings. The application, which claims priority from a Korean application filed on 23 November 2002, was filed as a European application on 24 November 2003 and refused at the oral proceedings on 13 November 2018. Between the applicant's letter of 22 March 2010 and the summons to oral proceedings eight years later on 8 May 2018 the examining division did not issue any office actions. In line with a number of decisions of the Boards of Appeal, including T 823/11 of 21 December 2015, T 2377/17 of 3 December 2018 and T 2707/16 of 11 December 2018, such delays may constitute a procedural violation.

7. In the grounds of appeal the appellant had not mentioned any such issues and had implicitly requested that the case be remitted for grant (see point III. above). The board was able to obtain a copy of the closest prior-art document used in the decision under appeal. In light of this, and for the sake of procedural efficiency, the board opted to examine the ground for refusal in substance and mention in its communication the most relevant issues regarding the closest prior art (see point IV. above). For the reasons below, the question of whether those deficiencies amounted to a substantial procedural violation within the meaning of Rule 103(1)(a) EPC does not have to be answered.

7.1 The appellant (applicant) did not request reimbursement of the appeal fee or ever mention any deficiencies. During the long examination proceedings, it did not request accelerated processing of the application or otherwise protested against the long duration of the examination.

7.2 According to decision T 2707/16, "a reimbursement of the appeal fee in view of unreasonable delays in first-instance proceedings should be regarded as equitable only where the applicant has made clear by some action that [it] did not tacitly agree with the stagnation of the proceedings" (Reasons 36). Since this criterion is not met in the case in hand, it is irrelevant whether the unreasonable examination delays constituted a substantial procedural violation.

7.3 As for the incorrect citation of the closest prior-art document in the decision under appeal, the board was able to identify the document referred to and review the inventive-step assessment in the contested decision. Since the claimed subject-matter is inventive over the disclosure of document D9, and the appellant did not contest it as prior art, there is no further need to establish whether the internet disclosure of D9 was indeed made public before the application's effective filing date. The board will therefore not rule on whether the deficiencies regarding the citation of the closest prior-art document constituted a substantial procedural violation.

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.