T 0762/20 - Is email a valid means of communication?

Key points

•  "point 9 of the contested decision states the following:

  "An email was sent to the applicant on 08-10-2019, in which the first examiner communicated the feature mapping of the inventive step objection under Article 56 EPC. The Article 56 EPC objection was based on document D5 (XP010914819, 'Towards Protecting Sensitive Files in a Compromised System') a further document found by the examining division which appeared to be a closer prior art document than D4."

• "However, the electronic file, which is the sole official file relating to the European patent application (Rule 147(1) EPC) and the record of the first-instance proceedings available for file inspection and used by the board in its judicial review, does not contain the email sent to the appellant on 8 October 2019."

•  "it seems that the email apparently sent on 8 October 2019 was the only occasion on which the examining division may have commented on document D5 and could have given a clear indication that this document would be relevant for the assessment of inventive step before issuing the written decision. The board thus agrees with the appellant's objections (see point IV. above) to the extent that the appellant was not officially informed of an inventive-step objection based on document D5 by the EPO before the notification of the contested decision. Moreover, in the circumstances of the current case, the missing email is the essential piece of evidence for reviewing whether the appellant's right to be heard under Article 113(1) EPC was respected. Since this email is not available to the board, the board cannot review the contested decision in a judicial manner (Article 12(2) RPBA 2020). "

• I wonder whether, had the email been available in the electronic file, it would have counted as a valid means of communication to safeguard the applicant's right to be heard.  Possible the present decision should not be interpreted in this way because the Board was addressing only the case at hand where it was not available in the file.

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

https://www.epo.org/en/boards-of-appeal/decisions/t200762eu1

4. Inventive step - Article 56 EPC

4.1 In the decision under appeal, the examining division used document D5 as a starting point in its reasoning on the ground for refusal of lack of inventive step.

4.2 Regarding the introduction of document D5 into the first-instance proceedings, as part of the facts and submissions, point 9 of the contested decision states the following:

"An email was sent to the applicant on 08-10-2019, in which the first examiner communicated the feature mapping of the inventive step objection under Article 56 EPC. The Article 56 EPC objection was based on document D5 (XP010914819, 'Towards Protecting Sensitive Files in a Compromised System') a further document found by the examining division which appeared to be a closer prior art document than D4."

4.3 However, the electronic file, which is the sole official file relating to the European patent application (Rule 147(1) EPC) and the record of the first-instance proceedings available for file inspection and used by the board in its judicial review, does not contain the email sent to the appellant on 8 October 2019.

4.4 The minutes of the telephone conversation held on 7 October 2019 were faxed on the same day and comprised a document as annex which, however, was only later identified as "document D5". The cover page of the minutes of the telephone conversation provides only an XP number of the annexed document, and does not have any bibliographic information or an indication that it corresponds to document D5. The document annexed to the fax is neither labelled with an XP number nor has any clear indication that it is to be designated as "document D5". Moreover, the text of the minutes of the telephone conversation does not mention any new document at all and, as argued by the appellant, instead seems to indicate that no new document is necessary (see point IV. above). The appellant does not contest the receipt of an email referring to an alleged "document D5", but does not describe the content of the email. The board is not in a position to assess either the content or any other details of the email.

4.5 In view of the above, it seems that the email apparently sent on 8 October 2019 was the only occasion on which the examining division may have commented on document D5 and could have given a clear indication that this document would be relevant for the assessment of inventive step before issuing the written decision. The board thus agrees with the appellant's objections (see point IV. above) to the extent that the appellant was not officially informed of an inventive-step objection based on document D5 by the EPO before the notification of the contested decision. Moreover, in the circumstances of the current case, the missing email is the essential piece of evidence for reviewing whether the appellant's right to be heard under Article 113(1) EPC was respected. Since this email is not available to the board, the board cannot review the contested decision in a judicial manner (Article 12(2) RPBA 2020). These circumstances constitute a further substantial procedural violation and a special reason for remitting the current case to the department of first instance (Article 11 RPBA 2020).

5. In the specific circumstances of the current case, it is not appropriate for the board to comment on the substance of inventive step for the main request.

6. Reimbursement of the appeal fee

Even though the first-instance proceedings were tainted by substantial procedural violations, the board considers that a reimbursement of the appeal fee is not equitable under Rule 103(1)(a) EPC since the examining division's objection that claim 1 of the main request considered in the contested decision was unclear was not tainted by a substantial procedural violation. Consequently, the appellant had to file an appeal against the decision on the refused main request in view of this objection for lack of clarity anyway. The fact that the examining division's clarity objection is not convincing does not change the situation regarding the reimbursement (see also decision T 2377/09, point 4 of the Reasons).

7. In view of the above, the contested decision is to be set aside and the current case is to be remitted to the responsible department of first instance for further prosecution on the basis of the current main request and without reimbursement of the appeal fee.

8. The decision can be made without holding oral proceedings since the appellant agreed to a remittal of the case on the basis of the current main request without holding oral proceedings.