T 2378/18 - Decision according to the state of the file

 Key points

•  The applicant requests a decision according to the state of the file, the applicant gets a decision according to the state of the file. Even though that sometimes seems the view of the EPO, the Board sees a substantial procedural violation in this case- correct in my view.
• " In response to the summons to oral proceedings, by letter dated 23 March 2018 the applicant filed amended claims 1 to 4 according to a new main request and new auxiliary requests 1 and 2, which replaced the requests then on file. "  
• " On 16 April 2018, the first examiner and the applicant's representative held a consultation by telephone." 
• " By letter dated 19 April 2018, the applicant withdrew its request for oral proceedings and requested a "Written Decision on the basis of the prosecution history as it currently stands"." 
• " By a further communication dated 23 April 2018, a copy of the result of the telephone consultation with the date "16.04.2018" was sent to the applicant. The examiner had expressed the opinion that the subject-matter of claim 1 of the main request and of auxiliary requests 1 and 2, filed by letter dated 23 March 2018, did not meet the requirements of Article 123(2) EPC and that the subject-matter of claim 1 of the main request did not involve an inventive step under Article 56 EPC in view of document D7."
• The refusal decision consisted of Form 2061 merely referring to the "result of the phone consultation" of 23.04.2018.
• The Board: " communications referred to in a decision "according to the state of the file" on EPO Form 2061 must contain a fully reasoned exposition of the examining division's objections to the current application text and refutation of any rebuttal by the applicant (see for instance T 583/04" 
• " the use of standard Form 2061 is only appropriate where the examining division has fully expressed and reasoned its objections to the current requests in one or more preceding communications, taking into account all the arguments put forward by the applicant and doing so in a manner which does not leave it to the board and the appellant to speculate as to which of the reasons given in preceding communications might be essential to the decision to refuse the application" 
•  " the examining division issued the communication of 23 April 2018 with the copy of the result of the telephone consultation without inviting the applicant to file its observations, and on 26 April 2018, i.e. only three days later, it issued the contested decision according to the state of the file. It follows that the decision under appeal in the case in hand is based on grounds on which the applicant had no opportunity to comment. The applicant's right to be heard enshrined in Article 113(1) EPC has therefore been infringed. " 
• The decision under appeal is set aside, the case is remitted, and the appeal fee is reimbursed.
• As a comment, the Examining Division could have held the oral proceedings. Even if the applicant would have stayed away, the Examining Division could likely have refused the application after consideration of the amended claims ( G4/92 has no bearing on ex parte proceedings).

T 2378/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t182378eu1.html

Reasons for the Decision

1. The appeal is admissible.

2. Even though the appellant has not challenged the examining division's decision on the grounds of a substantial procedural violation, the board is entitled to examine whether or not any such violation occurred during the examination proceedings (see for instance decision T 405/12, point 3 of the Reasons).

T 0568/17 - Decision according to the state of the file is no formality

Key points

• This is an examination appeal concerning an application for an invention pertaining to database technology. Although this pertains to software, the claims were not rejected due to non-technical features but due to  'classical' lack of novelty. The applicant had requested a decision according to the state of the file and refusal with Form 2061 was issued.
• The Board: "an applicant's request for a decision according to the state of the file by no means permits, let alone obliges, an examining division to immediately conclude the examination proceedings as a mere formality with a decision issued on a standard form; rather, the examining division has to verify whether it is in fact in a position to adopt the opinion and reasons expressed in its last substantive communication as its definite stance on the case."
• The Board considers the claims to be novel. The Board: " it is unfortunate that the Examining Division, which consisted of three technically qualified examiners, failed to detect the severe errors of judgment when the decision to refuse the application was prepared."
• The Board remits the case because an additional search may be necessary. "Whether the search was complete is not a question that the Board is equipped to answer. Since the question presents itself, there are special reasons within the meaning of Article 11 RPBA 2020 to remit the case for further prosecution."

T 0568/17 -  link






3. Main request - novelty and inventive step


3.1 Document D1 relates to the construction of an inverted index for high-dimensional data (see paragraph [0025] and claim 1). It does not disclose transactions, let alone a detailed mechanism for performing transactions as specified in claim 1 of the main request.

3.2 The Examining Division, in point 3.1 of the communication containing the reasons for the decision, apparently considered that "efficient transaction processing" was implicitly disclosed by the reference to current Online Analytical Processing (OLAP) systems in paragraphs [0009] and [0010] of the background section of document D1.

However, a reference to OLAP systems is far from a disclosure of a particular way of performing transactions.

T 0868/18 - Form refusal, appeal inadmissible

Key points

• This is an appeal against a form refusal (with Form 2061). There is no substantial procedural violation. Rather, the appeal is inadmissible.
• "The applicant lodged an appeal against the decision of the examining division which referred to the examining division's communications dated 6 April 2017 (communication C1) and 3 June 2016 (communication C2), refusing European patent application No. 06847717.3 on the basis of Article 97(2) EPC because the set of claims then on file did not fulfil the requirements of Articles 123(2) EPC, Article 56 EPC 1973 and Article 54(3) EPC."
•  The Board notes that: "[t]he present statement of grounds of appeal, however, does not contain such reasons for setting aside the decision relating to the objections raised under Articles 123(2) and 54(3) EPC. The amendment of claim 1 according to the main and sole request filed with the statement of grounds of appeal, consisting in moving a feature from the characterising portion of the claim to the preamble of the claim, is also not suitable to overcome these objections. Therefore, the appeal is inadmissible (Rule 101(1) EPC)."

EPO T 0868/18 -  link

Summary of Facts and Submissions

I. The applicant lodged an appeal against the decision of the examining division which referred to the examining division's communications dated 6 April 2017 (communication C1) and 3 June 2016 (communication C2), refusing European patent application No. 06847717.3 on the basis of Article 97(2) EPC because the set of claims then on file did not fulfil the requirements of Articles 123(2) EPC, Article 56 EPC 1973 and Article 54(3) EPC.

II. With the statement setting out the grounds of appeal, the applicant filed a new set of claims 1 to 9 and requested that the decision of the examining division be set aside and a patent be granted on the basis of this set of claims.
[...]

Reasons for the Decision

1. Admissibility of the appeal

1.1 With the statement of grounds of appeal, the applicant filed an amended set of claims as its main and sole request. The only amendment made in this new set of claims consisted in that claim 1 had been amended by moving the feature "a black matrix (39) separating said plurality of phosphor elements" to the preamble of the claim. In addition, the appellant presented arguments in favour of inventive step of the claimed subject-matter over the prior art documents.

No arguments dealing with the examining division's objections under Article 123(2) EPC and Article 54(3) EPC were submitted with the statement setting out the grounds of appeal.

T 0231/14 - Form refusal, appeal inadmissible

Key points

• In this examination appeal, the application was refused with Form 2061 (decision according to the state of the file). There is no substantial procedural violation. The appeal is inadmissible because the applicant did not rebut all grounds for refusal.
• In the last Communication of the Examiner (correctly referenced in Form 2061), the claim was rejected as obvious over: D1 with D7, D2 with D7, and D3 with D7.
• The Statement of grounds addresses novelty over D1, novelty over D7, and inventive step in view of D1 with D7. However, the Statement neither addressed D2 with D7, nor D3 with D7.
•  " Tatsächlich ist eine Behandlung der erfinderischen Tätigkeit des beanspruchten Gegenstands im Hinblick auf die Kombination der Dokumente D2 und D7 bzw. D3 und D7 weder einer schriftlichen Eingabe der Anmelderin im erstinstanzlichen Verfahren noch der Beschwerdebegründung zu entnehmen." 
• The applicant argued that no reasoning was necessary, because the form refusal would involve a substantial procedural violation as being not properly reasoned. The Board does not agree.
• "  Im vorliegenden Fall lässt sich jedoch nicht aus der Tatsache, dass die Entscheidung eine "Entscheidung nach Aktenlage" ist, folgern, dass ein Verstoß gegen das Begründungserfordernis von Regel 111 (2) EPÜ vorliegt, der die Beschwerdeführerin von ihrer Verpflichtung  entbinden könnte, die Beschwerde im Einklang mit den oben, unter Nr. 1.1 aufgeführten Grundsätzen in der Sache, d.h. im Hinblick auf die einzelnen Zurückweisungsgründe, zu begründen." 
• The Board finds the inventive step objection based on D3 with D7 to be properly reasaoned. "Jedenfalls in Bezug auf den Einwand mangelnder erfinderischer Tätigkeit basierend auf D3 in Kombination mit D7 kann der Vorwurf "mosaikartig" erhobener Einwände nicht gelten, da dieser Einwand erst im letzten Bescheid vom 24. Juni 2013 (siehe Punkt 3) erhoben wurde. Zudem sind in diesem Bescheid die Begründungen betreffend die Kombinationen D1 mit D7 und D3 mit D7 in den separaten Abschnitten 2 bzw 3 wiedergegeben, jeweils unabhängig voneinander formuliert und deutlich voneinander unterschieden. " 
• The appeal is rejected as inadmissible.

EPO T 0231/14 - link

Entscheidungsgründe

1. Gemäß Artikel 108 EPÜ, dritter Satz, EPÜ ist innerhalb von vier Monaten nach Zustellung der Entscheidung die Beschwerde nach Maßgabe der Ausführungsordnung zu begründen. In der Beschwerdebegründung hat der Beschwerdeführer darzulegen, aus welchen Gründen die angefochtene Entscheidung aufzuheben oder in welchem Umfang sie abzuändern ist und auf welche Tatsachen und Beweismittel er seine Beschwerde stützt (Regel 99(2) EPÜ). Wenn die Beschwerdebegründung diese Bedingung nicht erfüllt, ist die Beschwerde als unzulässig zu verwerfen (Regel 101(1) EPÜ).

1.1 Die in Artikel 108 EPÜ geforderte Begründung der Beschwerde ist so auszulegen, dass sie sowohl die rechtlichen Gründe, d.h. die Rechtsgrundlage, als auch die faktischen Gründe, d.h. die Tatsachen und Beweismittel, umfasst, die die Kammer braucht, um zu entscheiden, ob die angefochtene Entscheidung aufgehoben werden muss.

T 0452/16 - Form refusal, procedural violation

Key points

• Another Form 2061 refusal, another substantial procedural violation of the applicant's right to be heard.
• " The applicant's answer dated 26 January 2015 contains a detailed argumentation to support the view that [certain claim] features are of a technical nature and establish novelty, which argumentation may be summarised as follows: a cardboard box with patient leaflet information reveals a technical aspect by itself, as it contributes to solving the problem of providing a pharmaceutical composition ready for use by the end customer and produces the technical effect of protecting the compositions from light and physical damage." 
• " In the communication dated 22 May 2015, these arguments were not addressed: despite the blanket statement that "the arguments submitted by the applicant with letter of 26.01.2015 have been given due consideration", the communication merely concludes that "the examining division is still of the opinion that the features relating to the packaging and marketing of the pharmaceutical composition are not features having a technical character in the sense of Rule 43(1) EPC for claims directed to a pharmaceutical composition, and therefore cannot serve to confer novelty over Art. 54(1), (2) EPC prior art documents or Art. 54(3) EPC documents". Thus this communication merely repeats the examining division's conclusion that said features have no technical character, without a word about the specific technical aspects mentioned by the applicant." 
• The underlying issue is novelty over D9, a prior right under Article 54(3) EPC. 

EPO T 0452/16 -  link

Reasons for the Decision

1. Right to be heard (Article 113(1) EPC)

The right to be heard under Article 113(1) EPC requires that those involved be given an opportunity not only to present comments (on the facts and considerations pertinent to the decision) but also to have those comments considered, that is, reviewed with respect to their relevance for the decision on the matter (see Case Law of the Boards of Appeal, 8th edition 2016, III.B.2.4.1).

The Board considers that the examining division did not observe the appellant's right to be heard for the following reasons:

T 0171/15 - Form refusal

Key point

• Another refusal with Form 2061, another substantial procedural violation (three procedural violations this time: Rule 111(2), Article 113(1) and Article 113(2) EPC
• " The decision under appeal expressly states that no submissions of the appellant were filed "in reply to the latest communication" - this being the communication dated 15 January 2014 (see point II above). However, this is not correct since the appellant had actually filed amended sets of claims together with a letter dated 4 April 2014, also comprising, inter alia, arguments in relation to Article 56 EPC. The board can therefore only conclude that the examining division failed to take the appellant's submissions of 4 April 2014 into account, thereby violating the appellant's right to be heard pursuant to Article 113(1) EPC." 
• "   it might be assumed that the sets of claims filed on 4 April 2014 were the subject of the telephone conversation to which the appellant referred in its letter of 2 May 2014" 
• So in this case, the Examiner discussed the set of claims filed on 4 April 2014 with the applicant in a phone call and the refusal decision still states explicitly that no amendments were filed in response to the Communication of 15 January 2014. In such a case, the Boards interpretation that the Examining Division "failed to take the appellant's submissions of 4 April 2014 into account" seems rather kind. In my view, it's more likely that the Examining Division was not aware of the requirements of a Form 2061 refusal, or did not care about it, and likely also did not read the actual text of the Form, or did not care about the statement contained therein that "the applicant filed no comments or amendments in reply to the latest communication" (which by the way is on the signature  page, so it are really three Examiner signing off on the statement). 

EPO T 0171/15 -  link

II. The decision under appeal was issued using EPO Form 2061 and reads:

"Grounds for the decision
In the communication(s) dated 15.01.2014, 18.09.2012 the applicant was informed that the application does not meet the requirements of the European Patent Convention. The applicant was also informed of the reasons therein.
The applicant filed no comments or amendments in reply to the latest communication but requested a decision according to the state of the file by a letter received in due time on 02.05.2014.
The application must therefore be refused."

Reasons for the Decision

Remittal of the case pursuant to Article 11 RPBA

1. Under Article 11 RPBA, the board remits a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise.

2. In the board's judgement, the decision under appeal is deficient in various aspects, namely, for lack of proper reasoning within the meaning of Rule 111(2) EPC and in view of violations of the right to be heard under Article 113(1) EPC and of the principle laid down in Article 113(2) EPC, i.e. that the European Patent Office (EPO) must examine and decide upon a European patent application only in the text submitted to it, or agreed, by the applicant.

T 0123/14 - Form 2061, procedural violations

Key points

• This is an appeal against a refusal with Form 2061, a decision "according to the state of the file".
• |" The impugned decision explicitly states that the applicant had filed no comments in reply to the latest communication, which is manifestly incorrect. The Examining Division therefore ignored the arguments submitted after the communication referred to in the impugned decision and thus infringed the appellant's right to be heard, which amounts to a first substantial procedural violation." 
• This is a substantial procedural violation, the decision is also insufficiently reasoned because the applicant's argument with the last letter were ignored.
• " The Board wishes to point out that the above procedural violations could have been avoided if the Examining Division had simply issued a regular reasoned decision in response to the letter of reply taking into account the freshly presented comments." 

EPO  T 0123/14  - link

Reasons for the Decision

1. The appeal is admissible.

Procedural violation

2. According to Article 113(1) EPC 1973, the decisions of the European Patent Office may only be based on grounds and evidence on which the parties concerned have had an opportunity to present their comments.

3. The right to be heard under Article 113(1) EPC 1973 requires that those involved be given an opportunity not only to present comments but also to have those comments considered, that is, reviewed with respect to their relevance for the decision on the matter. The deciding department must demonstrably consider the comments. For an Examining Division not to violate an applicant's right to be heard, its decision has to actually address the arguments put forward by the applicant in its reply to a previous communication. It may be assumed that the right to be heard has been contravened if the reasons given for the Examining Division's decision merely repeat the reasons given for the communication issued before the said reply (see Case Law of the Boards of Appeal of the European Patent Office, Eighth Edition, July 2016, III.B.2.4.2).

T 2282/17 - Form refusal, 10 procedural violations

Key points

• Yet another refusal with Form 2061, yet another substantial procedural violation. The Board identifies 10 procedural violations (no reasoned decision, and not replying to the applicant's arguments on various matters).
• The form refers to 3 earlier Communications, but not all objections were clearly pursued by the ED up to the last Communication.  "It is therefore left to the appellant and to the Board to speculate whether any of the objections above, not pursued up to the third and last communication, are considered by the examining division to be reasons prejudicial to the granting of the patent." This is the 1st procedural violation.
• The second procedural violation concerns the argument of the application that D7 was a US design patent, and hence is not the first application in the sense of the Paris Convention (design patents are not industrial property rights under the Paris Convention) as held in  J15/80, such that the claimed priority was valid. 
• "The examining division did not comment on the arguments presented by the appellant in its first reply, in either its second or third communication. In particular, there is on file no counter-argument of the examining division with regard to the relevance of decision J 15/80 to the present case or to the appellant's argument that some features of claim 1 cannot be derived from D7. The absence of any indication that the arguments put forward by the appellant have been considered constitutes a violation of Article 113(1) EPC."
• The third procedural violation is that the ED did not reply to the applicant's arguments that D2 was not novelty destroying for claim 1. This a violation of the right to be heard, because the objection is effectively maintained in the refusal with Form 2061. 
• The fourth procedural violation is that the ED did not reply to the applicant's arguments that D2 was not novelty destroying for claim 7. This a violation of the right to be heard.
• The fifth procedural violation is that the ED did not reply to the applicant's arguments that claim 5 was clear. This a violation of the right to be heard.
• The sixth procedural violation is that the ED "failed to indicate in the communication wherein D1 or D3 these features could be found" for the inventive step rejection. This is a violation of Rule 111(2) EPC.
• The Board identifies a further seventh procedural deficiency. The ED did not give reasons " why the absence in claim 1 of such features causes the subject-matter of the claim to extend beyond the content of the application as filed" thereby violation Rule 11(2) EPC.
• " Moreover, by not providing detailed counter-arguments with respect to the appellant's argument that claim 1 represents an allowable limitation of originally filed claim 24"  the ED violated the right to be heard. This is the 8th procedural violation.
• The ninth procedural violation concerns the dependent claims. " As for independent claim 1, in its reasoning the examining division fails to specifically indicate the features which are actually disclosed in combination with the features of dependent claims 2 to 4 and whose absence from the dependent claims gives rise to an unallowable intermediate generalisation, and to give reasons why this should be the case." 
• The 10th procedural violation is that "Furthermore, the examining division does not provide detailed counter-arguments to the appellant's argument that because claims 2, 3 and 4 were formulated with features taken from the example [they ad basis in the application as filed]". This violates the right to be heard.

X. The examining division issued the impugned decision in a standard form. The decision refers to the first, second and third communications. The full text of the grounds of the decision reads as follow:

"In the communication(s) dated 09.09.2016, 22.03.2016, 09.07.2015 the applicant was informed that the application does not meet the requirements of the European Patent Convention. The applicant was also informed of the reasons therein.
The applicant filed no comments or amendments in reply to the latest communication but requested a decision according to the state of the file by a letter received in due time on 08.03.2017.
The application must therefore be refused."

Reasons for the Decision

2. The appellant submits that a standard decision form for issuing a decision on the state of the file which refers to several communications and leaves it up to the Board to construct the applicable reasons by "mosaicing" various arguments from the file, or which leaves it in doubt which argument applies to which claim version, does not meet the "reasoned" requirement of Rule 111(2) EPC.

T 1946/17 - Decision state of the file unreasoned

Key points

• Another decision 'according to the state of the file' (EPO Form 2061), another substantial procedural violation. Three substantial procedural violatons, even. 
• The applicant had submitted some arguments. In the last substantive Communication, the ED had" merely stated that the "arguments were carefully considered", but "no new evidence" was provided. Such blanket statements cannot be considered to address the arguments raised. Hence, the present "standard form" decision [...] does not comply with the requirement of Rule 111(2) EPC that the decision be reasoned." 
• The decision is also inconsistent in that in 2015, the ED had stated that examination of A54 and A56 was deferred, but in the last communication, the ED had stated that the earlier objections under A54 and A56 were maintained. Hence, the decision is not properly reasoned.
• Furthermore, the decision is factually incorrect in that it states that the applicant had merely requested a decision according to the state of the file with the letter of 17.03.2017 without comments, whereas in fact, the letter included four substantive comments. 

EPO T 1946/17 -  link

Summary of Facts and Submissions

I. The Appellant (Applicant) is contesting the Examining Division's decision dated 3 April 2017, with which the European patent application no. 07 811 466.7 was refused.

II. The contested decision is a decision according to the state of the file, taken by means of a standard form referring to previous communications. The grounds for the decision read as follows:

"In the communication(s) dated 26.02.2016, 11.05.2015, 17.02.2014 the applicant was informed that the application does not meet the requirements of the European Patent Convention. The applicant was also informed of the reasons therein.
The applicant filed no comments or amendments in reply to the latest communication but requested a decision according to the state of the file by a letter received in due time on 17.03.2017.
The application must therefore be refused."

 Reasons for the Decision

1. The appeal is admissible.

2. Main Request, Rule 111(2) EPC

2.1 At the time when the contested decision was issued, the requirements for issuing a refusal using a standard form referring to previous communications were set out in the Guidelines for Examination in the EPO, November 2016, C-V, 15.2.

According to the first paragraph of Guideline C-V, 15.2, in order to comply with the requirement that a decision be reasoned (Rule 111(2)), it is only possible to use this form of decision where the previous communication addresses all the arguments raised by the applicant.

T 2506/13 - Decision state of the file, procedural violation

Key points

• Another decision according to the state of the file, another procedural violation for lack of proper reasoning.
• The Board: "It is therefore not derivable from the impugned decision, which features of the independent claims according to, in total, four different pending requests, the examining division considered to be disclosed in combination in the prior art and which they regarded as distinguishing features."
• "The board, and in fact any objective reader, is therefore not able to understand how the examining division arrived at their objective technical problem formulation "to adapt the general knowledge to a particular situation" without guess work. It is also not objectively determinable how the examining division arrived at their assessment of the solution."

T 2506/13 -  link

Reasons for the Decision

1. The appeal is admissible

2. Procedural violation

2.1 According to Rule 111(2) EPC, decisions which are open to appeal shall be reasoned.

2.2 In their decision according to the state of the file, the examining division makes reference to the communication of 27 May 2013. In said communication, the examining division argues, based on documents D3 to D10, what, in their own words, the skilled person's general knowledge was. It is not apparent from that communication which combination of features of the claims corresponds to what the examining division identifies to be general knowledge.

2.3 The examining division then goes on to say that

"the subject-matter of the claims differs from the prior art (the general knowledge of the skilled person as set out above) only by simple configuration features. The technical effect and problem solved by these features is to adapt the general knowledge to a particular situation. As adapting this knowledge to a particular situation belongs to the normal endeavours of the skilled person, the recognition of this problem as such does not involve an inventive step.

T 0536/13 - Decision state of the file

Key point

• Another decision according to the state of the file, another substantial procedural violation.
• " From the statement in the reasons for the decision that "The applicant filed no comments or amendments in reply to the latest communication ...", it is evident that the decision does not take into account the comments and amended application documents that were filed with the applicant's letter dated 23 April 2012. Consequently the decision does not comply with the requirement of Article 113(2) EPC that the EPO shall examine, and decide upon, the European patent application only in the text submitted to it, or agreed, by the applicant. This amounts to a substantial procedural violation." 
• " Furthermore, in the absence of any reasoning in respect of the applicant's latest comments and amendments the Board and the appellant are left in doubt as to which of the previously-raised objections still apply. [...] Thus the decision is not reasoned within the meaning of Rule 111(2) EPC, which constitutes a further substantial procedural violation." 

EPO T 0536/13 - link

Reasons for the Decision

1. The appeal is admissible.

2. The contested decision is a so-called "decision according to the state of the file". The grounds for the decision read as follows:

T 2187/17 - Decision state of the file unreasoned

Key points

• Another decision according to the state of the file, another substantial procedural violation.
• " The appellant filed counter-arguments to all of these in its nine-page submission of 27 February 2017. It addressed in particular the reasons why the Examining Division considered the composition not to fall under the requirements of Article 54(5) EPC. [...] 6. The impugned decision does not contain any reasons as to why these arguments presented by the appellant in support of the allowability of claim 1 were not relevant and were unable to convince the Examining Division. Therefore, it is left to the appellant and to the present Board to speculate on the very reasons for the refusal." 
• " By failing to give the reasons for the decision and explain why the applicant's last arguments were not considered convincing, the Examining Division did not issue a reasoned decision within the meaning of Rule 111(2) EPC, thereby depriving the appellant of its right to obtain such a fully reasoned decision, which constitutes a substantial procedural violation."
• " It should be noted that a request for a decision based on the current state of the file is not to be understood as a waiver by the party of its right to a fully reasoned decision. The departments of the European Patent Office cannot omit to give reasons for their decisions when the EPC requires them to do so."

EPO T 2187/17 - link

Summary of Facts and Submissions

I. The appeal is directed against the decision of the Examining Division posted on 21 April 2017 to refuse the application. The decision was a so-called decision according to the state of the file.

The decision reads as follows:

"In the communication(s) dated 05.03.2012, 19.03.2015, 08.08.2016 the applicant was informed that the application does not meet the requirements of the European Patent Convention. The applicant was also informed of the reasons therein.
The applicant filed no comments or amendments in reply to the latest communication but requested a decision according to the state of the file by a letter received in due time on 27.03.2017.
The European patent application is therefore refused on the basis of Article 97(2) EPC."

VI. On 27 February 2017 the appellant filed a nine-page submission in preparation for the oral proceedings in which it analysed the legal texts, the guidelines, the alleged requirement for the presence of a therapeutic effect and the cited decisions and concluded that the claim directed to the composition was allowable pursuant to Article 54(5) EPC.

VII. On 27 March 2017 the appellant informed the Examining Division that it would not attend the oral proceedings, and it requested a decision according to the state of the file.

Reasons for the Decision

3. Under Article 106(1) EPC, the decisions of the examining divisions are open to appeal. According to Rule 111(2) EPC, decisions of the European Patent Office which are open to appeal must be reasoned.

[...]

It should be noted that a request for a decision based on the current state of the file is not to be understood as a waiver by the party of its right to a fully reasoned decision. The departments of the European Patent Office cannot omit to give reasons for their decisions when the EPC requires them to do so.

4. In the present case the impugned decision solely refers to two communications, and an annex to the summons to attend oral proceedings.

As can be seen from points III and IV above, the annex to the summons posted on 8 August 2016 for the first time addressed the version of the claim filed with the letter of 25 September 2015 to be discussed in the oral proceedings of 28 March 2017 and contained a number of new arguments/reasons why the claim was not allowable.

T 0591/17 - Decision state of the file

Key points

• Another "decision according to the state of the file", another substantial procedural violation. 
• The present application was filed in 2003, and is remitted back to the ED. The age of the case " does not constitute a special reason for not remitting the case", taking into account that the applicant is not in a hurry. 
• The refusal of the ED is a form referring to a Communication of 4 March 2016. That communication in turn "refers to the communication of 22 March 2005 and the telephone conversation of 27 July 2015. In each of these instances, a different set of claims was before the examining division. It is, thus, not clear to what extent the reasons in the earlier communication and telephone conversation still applied to the claims on file when the decision was taken and to what extent they were overcome by the appellant's arguments put forward in the meantime." 
• The refusal was based on lack of inventive step over D1 with D9. "As regards D9, the communication refers to three entire pages and a complete figure of D9 to show that all the "security" features of claim 1 were known from that document. The communication does not, however, define the " security features" [and therefore does neither] state which features the examining division considered to be disclosed in D9. [] Also the broad brush reference to large parts of D9 is an obstacle to determining which features of claim 1 the examining division considered to be known from D9 and why. " 
• The refusal is therefore insufficiently reasoned and this is a substantial procedural violation. 

EPO T 0591/17 -  link

Reasons for the Decision

1. Rule 111(2) EPC provides that decisions of the EPO which are open to appeal shall be reasoned. The decision must contain, in logical sequence, those arguments which justify the tenor. All facts, evidence and arguments which are essential to the decision must be discussed in detail (see, for instance, T 278/00, point 2 of the reasons, and T 897/03, points 2 and 3 of the reasons).

2. For its reasons, the decision under appeal refers to the communication dated 4 March 2016. It is established jurisprudence of the boards of appeal that such decisions are in principle accepted, but that a decision "by reference" is only reasoned within the meaning of Rule 111(2) EPC if the communication referred to itself contains the required reasons (see, for instance, T 963/02, point 2.1 of the reasons).

3. The communication referred to states that the then claims lacked inventive step both in view of D1 and D2 and in view of D9.

3.1 As regards D1 and D2, the communication itself refers to the communication of 22 March 2005 and the telephone conversation of 27 July 2015. In each of these instances, a different set of claims was before the examining division. It is, thus, not clear to what extent the reasons in the earlier communication and telephone conversation still applied to the claims on file when the decision was taken and to what extent they were overcome by the appellant's arguments put forward in the meantime. The examining division appears to concede this by stating in the communication of 4 March 2016 that only "similar" reasoning applied to the claims pending at the time, without however explaining to what extent the earlier reasoning still applied and to what extent it had to be adapted.

T 1922/17 - Decision according to the state of the file

Key points

• In this case, the ED had refused the application with a decision according to the state of the file, which decision referred to an earlier communication for the reasons. The Board finds this a procedureal violation, because the claims had been amended after the communication.
• " As the communication dated 2 November 2015 is not based on the latest request of the applicant, particularly with regard to the amended description filed on 4 November 2016, the reference to this communication cannot be accepted as sufficient reasoning underlying the appealed decision." 

EPO T 1922/17 - link

Reasons for the Decision

1. Necessity to provide adequate reasoning in a decision

1.1 Rule 111(2) EPC embodies the general principle of law that appealable decisions must be reasoned. It states inter alia: "Decisions of the European Patent Office which are open to appeal shall be reasoned". The function of appeal proceedings is to give a judicial decision upon the correctness of a separate earlier decision (G 9/91, OJ 1993, 408, reasons 18; T 1182/05, reasons 3). The reasoning given in a decision open to appeal has to enable appellants and the Boards of Appeal to examine whether the decision was justified or not. In other words, it is not up to the Board or the appellant to speculate as to what might be the intended meaning behind the reasoning. A reasoned decision meeting the requirements of Rule 111(2) EPC is accordingly also a prerequisite for the examination of the appeal (see also T 1182/05, reasons 3).

T 1814/12 - Decision according to the state of the file

Key points

• In this examination appeal, the applicant had requested a decision according to the state of the file. This was requested after the summons for oral proceedings and a telephone consultation. 
• The Board considers the decision to be insufficiently reasoned and finds this to be a substantial procedural violation.
• " [A] decision on the state of the file should be taken on the basis of facts and arguments already on the file in written form, which excludes the minutes of a telephone conversation unless the statements made orally in this telephone conversation were confirmed in a written communication. For this reason alone, the contested decision does not meet the requirements of Rule 111(2) EPC." 

EPO T 1814/12 - link

Reasons for the Decision

Admissibility of the appeal

1. As the appellant remedied the deficiency of the missing signature of an authorised person authenticating the statement of grounds of appeal in due time (Rule 50(3), second sentence, EPC), the appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.

Deficiencies of the contested decision

2. According to Rule 111(2) EPC decisions of the European Patent Office which are open to appeal (including decisions "according to the state of the file") must be reasoned. This provision has been interpreted by the boards of appeal as requiring a reasoning which enables the appellant and the board to examine whether or not the decision was justified. The grounds upon which the decision is based and all decisive considerations in respect of the factual and legal aspects of the case must therefore be contained in the decision.

3. The contested decision is a decision on the state of the file. It is in a standard form and does not itself specify the grounds on which it is based; it simply refers to preceding communications where corresponding objections were raised (see Guidelines for Examination in the EPO (November 2017), C-V, 15.2). According to well-established case law of the boards of appeal, a decision drafted using this standard form complies with the requirement that a decision be reasoned pursuant to Rule 111(2) EPC only if certain conditions are fulfilled. In particular, the examining division must have fully expressed and reasoned its objections in the cited preceding communication or communications, taking into account all relevant arguments put forward by the applicant.