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.

T 2726/17 - Filing the notice of appeal with web-form filing

Key points

• The applicant filed a notice of appeal using web-form filing.
• "According to Article 2 of the Decision of the President of the European Patent Office of 10 September 2014 (OJ EPO 2014, A98, "Decision") the filing of appeal documents via the EPO web-form filing service is not permitted, the consequence being that such documents are deemed not to have been received, see Article 2(2) of the Decision. Pursuant to the last sentence of Article 2(2) of the Decision, the sender of such web-form filed documents, if identifiable, will be notified without delay of this deemed non-receipt."
• However, not all is lost.
• " The sender of the notice of appeal was identifiable. Between the actual filing of the notice of appeal on 13 September 2017 and the final date of the time limit for filing the notice of appeal (6 October 2017) there was sufficient time for the EPO to notice the irregularity in the filing of the notice of appeal, to inform the appellant thereof and for the appellant to resubmit the notice of appeal by accepted means. It appears from the file that no such notification was issued. The appellant has confirmed this in its letter dated 4 January 2018."
• "In the light of the above, the Board, in accordance with the principles of legitimate expectations and of good faith (see, for instance, T 14/89, OJ 1990, 432, headnote), considers the notice of appeal as having been duly received."
• As a comment, web-form filing could be used in September 2017 for giving debit orders (in general, i.e. in first-instance proceedings). The prohibition of giving debit orders by webform filing entered into force a few months later.
• "The grounds of appeal were filed on 9 November 2017 again using the EPO web-form filing service."
•  The Board does not comment expressly on why the statement of ground is considered to be validly filed. 

EPO 

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

T 0158/21 - The pre-conversion archive

Key points

• In this case, the applicant files a patent application online, attaching the Word document as a so-called pre-conversion file. The PDF file and the Word document as actually filed, however, belong to different versions of the application. The case is a divisional application, and two divisional applications were filed shortly after each other. 
• The legal basis for the pre-conversion archive is Art. 11 Dec. Pres. OJ 2021 A42: " Technical documents relating to a European or international patent application may in addition be attached to the application in the data format in which they were created, provided the files contain either plain ASCII text or were created with one of the following word processing programs: (a) Microsoft Word 2010 or later ..." However, that notice does not give any indication what this so-called pre-conversion archive can be used for. For PCT applications, reference can be made to Sections 706 and 710 of the Administrative Instructions: " Where it is found that the international application as filed in electronic form is not in fact a complete and accurate copy of the document in the pre-conversion format submitted under paragraph (a), the applicant may, within 30 months from the priority date, request the receiving Office to correct the international application so as to bring it into conformity with the document in the pre-conversion format." Note that: " Where, for the purposes of filing the international application in electronic form, the document making up the international application has been prepared by conversion from a different electronic document format (“pre-conversion format”), the applicant may ... submit, together with the international application, the document in the pre-conversion format," 
• In the case at hand, the PDF  file as uploaded was not prepared from the submitted word document, but from a different version of the word document.
• "The applicant requested in essence that the set of claims annexed to the electronically filed application as pdf-file be replaced by the set of claims contained in the zip-file which was also attached to the electronically filed application. " 
• The Board: " Such a pre-conversion file is foreseen to be attached if the document attached to the application form (in the present case the pdf-file of the claims) has been prepared by conversion from a different electronic document format. The aim of this is to have the original file available in the case of corruption of the document due to the format conversion. Thus, the pre-conversion file is meant to be taken into account only in order to solve problems which are due to the conversion of document formats. In the present case the set of claims contained in the pdf-file did not show any sign of corruption. " 
• " According to Rule 139 EPC, second sentence, the correction must be obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction, if the request for such correction concerns the description, claims or drawings. The Board concurs with the appellant insofar as it appears evident that an error occurred when filing the present application in view of the different reference numbers used for the pdf- and the zip-file. However, it is by no means obvious whether the mistake lay in the filing of an incorrect set of claims as pdf-file or whether the reference numbers themselves were incorrectly chosen." 
• Note that the Board here looks beyond the four corners of the (PDF) description, under Rule 139, second sentence, where it refers to the " different reference numbers used for the pdf- and the zip-file". Moreover, the pdf file "on the screen" does not show the reference numbers; these can instead be inferred from the "original file name"  as shown in the Request for grant form.
• A further procedural twist is that the applicant had filed an earlier appeal, the Examining Division granted interlocutory revision, and then " refused the application again by a second decision". 
• " the Examining Division conceded that it had not taken into account one of the essential arguments put forward by the appellant (cf. impugned decision, point 15 of the Summary of Facts and Submissions). This argument was then dealt with by the Examining Division under points 1.3.4 and 1.9 of the Reasons of the impugned decision. Thus, the Examining Division considered the (first) appeal to be well founded due to the aforementioned procedural violation and set aside its decision refusing the application dated 29 November 2018. This handling of the case is thus in line with Article 109(1) EPC (cf. T 647/93, point 2.6 of the Reasons). Thereafter the Examining Division resumed the proceedings in order to consider the applicant's argument which had not been dealt with in the decision of 29 November 2018 and to give the applicant the opportunity to exercise its right to be heard in particular on that point. Since further examination was required the proceedings were resumed which led ultimately to a second refusal of the application." 
• " In that regard it is noted that resumption of the proceedings does not rule out a subsequent refusal of the application (cf. T919/95, point 2.1 of the Reasons, with further references; also reflected in the Guidelines for Examination, E-XII, 7.4.1)." 
• No request for reimbursement of the appeal fee had been filed in the first appeal, and the examining division hence neither reimbursed the appeal fee nor forwarded a request for reimbursement under (what is now) R.103(6) (see here; the first Notice of appeal and statement of grounds seem unavailable in the online file).
• "[In] the present case the examining division rectified its (first) decision refusing the application in view of the fact that a crucial argument of the appellant had not been taken into account, constituting a violation of the appellant's right to be heard. Thus, the requirements under Rule 103(1)(a) EPC for reimbursement of the appeal fee paid on 8 February 2019 are met and therefore the Board orders reimbursement of that appeal fee." 
• 
  

EPO 

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

OJ 2015/3: CMS filing now also for appeal documents (OJ 2015, A27)

Decision of the President of the European Patent Office dated 11 March 2015 concerning the filing of documents using the EPO case management system

Keypoint
Documents relating to appeal proceedings and for petition for review proceedings are no longer excluded for CMS filing (Article 2(1)). Priority documents are still excluded.

Analysis
This seems to be the only change. The change does not seem to be mentioned in the Notice.
The still excluded priority documents are the documents of R53(1), the certified copy. It seems to me that filing with the CMS of the translation under R53(3) should be possible.

OJ 2015 A27
For the text, click here |  Entry into force: 1 April 2015 | Supersedes: Dec. Pres. of 10 September 2014 (OJ 2014, A97) | Explaining Notice 30.03.2015 (not pulished in OJ)