J 0010/25 - (I) Correctly followed the procedure, still SPV

Key points

• In this case, a European patent application was filed with formal deficiencies in the drawings. The Receiving Section issues a communication under Rule 58; no reply is received within the period of two months, and the Receiving Section issues a decision refusing the application using the appropriate form 1088 (https://link.epo.org/communications/F1088E_07.19_en.pdf) that contains, in relevant part:
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• The Legal Board sees a substantial procedural violation in a very short decision.
• "4. The Decision [of the Receiving Section] is ambiguous: the defect could be that the deficiencies noted in the communication dated 10 October 2024 were either: "Not corrected in due time"; or "Not properly remedied". The decision leaves open whether refusal was based on non-observance of the Rule 58 EPC time limit or on an assessment that the subsequently filed drawings still failed to meet Rule 49 EPC. Thus, the decisive ground remains unclear. This violates Rule 111(2) EPC (reasoned decision) and deprives the appellant of effective judicial reasoning. This ambiguity thus constitutes a substantial procedural violation. "
• The Legal Board's point is this, I think: the EPO is not precluded from issuing a reasoned, written decision, i.e. a decision with written case-specific findings and legal reasoning. The choice of the EPO President to prescribe the use of forms to the officers staffing the Receiving Section does not derogate from Rule 111(2) EPC. In other words, Form 1088 as such should be reconsidered. 
• When we are at it: why does the form include the following list of tick boxes? 
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  My theory is that it originates from when the forms were pre-printed in batches, not printed on demand with an inkjet printer. A typist would take a printed form (i.e., one sheet of paper pre-printed with the fixed text of the form), tick the relevant box from the list, and type (with a mechanical typewriter) the application number, etc., in the appropriate empty spaces on the form. Comments are welcome, however.  
• My view is that any form with a list of check boxes is outdated, or at least old-fashioned. Communications from the EPO should no longer contain text that does not apply to the case concerned. 
• There is more to this decision. Stay tuned!
  
  
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EPO 

The link to the decision is provided after the jump.

T 1571/23 - No harmless error rule?

Key points

• The OD revoked the patent. The proprietor appeals and requests that the impugned decision be set aside because of an alleged substantial procedural violation.
• The Board, in translation: "In the Board's view, it is immediately apparent from the grounds of appeal that the patent proprietor wishes to have the contested decision set aside due to procedural defects, in particular a violation of the right to be heard, and to have the matter remanded to the Opposition Division. In view of the alleged procedural defects, it is irrelevant whether the appeal can also be considered sufficiently substantiated with regard to the key grounds of the decision, namely the inadmissible extension and the lack of clarity concerning the requests admitted by the Opposition Division (see Case Law of the Boards of Appeal of the European Patent Office, 11th edition, 2025, V.A2.6.7.c; T 1020/13, Reasons 1)."
• • As a comment, there could also be a rule that the procedural error must not be harmless, i.e., that it could have influenced the outcome of the case.
  • CLBA V.A.2.6.7.c cites only one decision, namely T 1020/13.
  • I think a distinction should be made between procedural errors that vitiate the entire decision (i.e., wrong composition of the OD, lacking signature to the decision) and a violation of the right to be heard. In the latter case, there should be at least a prima facie argument made why the substantive reasoning was wrong on the point affected by procedural error, and how the outcome of the case could have been different with correct reasoning (to deal with the case that there are two alternative grounds for refusal, only one of them being affected by the alleged violation of the right to be heard). 
  • The decision is in line with T 0898/24.
• The Board finds no procedural error concerning the main request.
• AR 1 to 91 were not substantiated in the appeal and were not admitted.
• The proprietor's appeal against the decision revoking the patent is dismissed.

EPO 

The link to the decision is provided after the jump.

T 0599/24 - Art. 113 and auxiliary requests, what about main request?

Key points

• The OD revoked the patent. The proprietor appeals. The issue before the OD was insufficient disclosure, Art. 100(b) EPC.
• In translation: " according to the minutes of the oral proceedings before the Opposition Division, the appellant [=proprietor] was not allowed to submit arguments concerning the auxiliary requests. Following the pronouncement of the Opposition Division's opinion that "the damage under Article 100(b) [was] irreparable" (minutes, point 8), the appellant indicated that it wished to rearrange the order of the auxiliary requests (minutes, point 8.2), which the Chairman did not allow (minutes, point 8.3). After the appellant then stated that it had no further comments concerning the main request (minutes, point 8.4), the Chairman began to pronounce the revocation of the patent (minutes, point 8.5). The applicant drew attention to the failure to comply with her request regarding the subsidiary requests (minutes 8.5 and 8.7). After deliberation with the division, the President indicated that the final decision had been given and that, consequently, the applicant's request could no longer be considered; the oral proceedings were then closed (minutes 8.10) without the applicant being given the opportunity to be heard on the subsidiary requests already in the file or to submit any amended requests."
• The Board considers this to be a substantial procedural violation.
• The Board also remits the case.
• The Board does not comment on the claims as granted.
• In appeal, "The appellant requested that the decision of the Opposition Division be set aside on the grounds of a substantial procedural violation (violation of the right to be heard) and that the case be remitted to the first instance. In addition, it requested reimbursement of the appeal fee."
• The respondent had contested the admissibility of the appeal: "the statement of grounds of appeal does not contain any substantive arguments concerning the reasoning of the decision under appeal, it meets the requirements of Rule 99(2) EPC and Article 12(3) RPBA. The only objection raised by the appellant in its grounds of appeal is that the decision is based on a violation of its right to be heard."
• The Board considered the appeal to be admissible: "In the present case, the grounds of appeal contain sufficient explanations as to why the appellant considers that its right to be heard was not respected and, therefore, that the contested decision should be annulled. In addition, the grounds set out the facts in detail with reference to the minutes of the oral proceedings before the Opposition Division."
• Now the question is: must the OD decide again on the sufficiency of disclosure of the claims as granted, or is this res judicata as not being contested in the appeal?

EPO 

The link to the decision can be found after the jump.

T 1870/21 - Admitting a document is a substantial procedural violation (?)

Key points

• Can admitting a document be a substantial procedural violation?
• Note that current case law appears to be that the  Board can not review a decision to admit a submission.
• "According to the appealed decision (see §6.2), [D50, filed by the proprietor] [was] not relevant for the reasons of the decision, so that the appellant's [opponent's] request not to admit them was not discussed. This is however contradicted by the fact that the inventive step reasoning set out later in the decision relies on "E40", which corresponds in fact to D50 in the respondent's original numbering (see §8.4.3.1)."
• " The relevant question is thus whether the opposition division committed a substantial procedural violation justifying a reimbursement of the appeal fee under Rule 103(1)(a) EPC."
• "it remains that the opposition division took D50 into account in the appealed decision without first hearing the parties on the appellant's request not to admit D50. By deciding to reject the opposition without hearing the appellant on a request relevant to that decision, the opposition division infringed Article 113(1) EPC and committed a procedural violation. Considering that, during the oral proceedings before the opposition division, neither the admittance nor the content of D50 were discussed, and no decision as to its admittance was announced, it could not be expected from the appellant that they would present their arguments at the oral proceedings with regard to D50."
• Note, the problematic issue seems to be not so much the decision to admit D50, but the fact that the opponent had no fair or real opportunity to comment on D50 during the oral proceedings.
  
  
• "According to the respondent [proprietor], D50 is not the underlying reason for the opposition division's finding of non-obviousness, which was rather motivated by the case law (T385/07 and T715/03) acknowledging inventive step over prior art referencing ongoing clinical phase I and II trials. The opposition division's conclusion at the end of section 8.4.2 would already address the question of 8.4.3 regarding whether there was a reasonable expectation of success in view of the promising results, such that the same conclusion would have been reached even without section 8.4.3.1."
• The Board: "The section relying on D50 (i.e. §8.4.3.1) is the only passage of the decision explaining why, in the opposition division's view, and contrary to the appellant's position, there was no reasonable expectation of success despite these promising results disclosed in the prior art D2/D3."
• The Board does not go into the content of D50.
• "In section §8.4.4, the opposition division differentiates the case at hand from decisions T 2506/12, T 725/11 and T 239/16, and concludes that the knowledge that clinical trials were ongoing would not have given the skilled person a reasonable expectation of success. This passage does not address either the issue of expectations in view of the promising experimental in vitro and in vivo results reported in D2/D3, which the appellant had raised in the first instance proceedings (see the third paragraph on page 4 of the minutes)."
• "Accordingly, it cannot be concluded that the argumentation based on D50 is to be seen as a merely supererogatory and incidental argument in the appeal decision. The Board therefore concludes that the appealed decision is tainted by a substantial procedural violation."

• The Board remits the case (and reimburses the appeal fee).

• I assume that the opponent can now comment on D50 in the procedure before the OD? (and that the OD has to decide formally on the admissibility of D50?) I also assume that the opponent made the relevant arguments already in the appeal (otherwise, there would be an issue of harmless error).

EPO 

You can find the link to the decision after the jump.

T 0898/21 - Harmless error rule

Key points

• "Harmless error is an error by a trial judge in the conduct of a trial that an appellate court finds was not damaging enough to the appealing party's right to a fair trial to justify reversing the judgment, or to warrant a new trial. Harmless errors include: technical errors that have no bearing on the outcome of the trial, ..." (https://www.law.cornell.edu/wex/harmless_error)
• The Board, in machine translation: "The board shares the appellant's [proprietor's] view that her right to be heard in accordance with Article 113(1) EPC was violated in the opposition proceedings. The opposition division stated in point 11 of the contested decision that the subject matter of claim 1 of [...]was not inventive, namely based  document  (Z1), in combination with the teaching of E4 []. The person skilled in the art would arrive at the subject matter of claim 1 without any inventive intervention."
• "The board agrees with the appellant that there is no record of the opposition division or the respondent having previously raised this objection in writing or orally. In their previous communications and in the discussion during the oral proceedings before the opposition division, only document E11 [] is mentioned as a starting point, while the question of inventive step is based on the technical knowledge or document Z1 in combination with the teaching of document E4 was not discussed according to the minutes."
• "The respondent [opponent] submitted that the outcome of the opposition division's deliberations would have been the same even if the appellant had had the opportunity to comment on this objection. [...] It is not immediately clear from the [proprietor's] arguments why the outcome of the decision would be different in the event of a remittance.  The board is not convinced by the respondent's arguments."
• "What is important is not whether the opposition division would have come to the same conclusion after hearing the parties involved on this objection, but whether the parties were given the opportunity to comment on this objection (Z1 as the closest prior art in combination with the teaching of E4). Such an opportunity was obviously not given, which was not disputed by the respondent. It should also be noted that an objection that took common general knowledge as a starting point was also not discussed in the opposition proceedings."
• The case is remitted, without a decision on the allowability of the claims. 
• Any reimbursement of the appeal fee is not discussed. 
• As a comment, I think the Board could have dealt with the allowability of the claims if the outcome had been clear. A remittal is discretionary, even in case of a substantial procedural violation.
• Whether or not indications of a different outcome are relevant for the question of reimbursement of the appeal fee in case of a remittal remains to be seen. If the Board had come to the conclusion that the claims were not allowable, the appeal would have been dismissed, and no reimbursement of the appeal fee would have been given.
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EPO 

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

T 2020/20 - Change of ED composition between OP and decision taken in writing

Key points

•  "At the end of the oral proceedings, the examining division informed the appellant that it could expect a communication pursuant to Rule 71(3) EPC on the basis of auxiliary request 2, provided that a clean copy of the application documents was filed."
• "On 21 August 2019, the examining division issued a third communication pursuant to Rule 71(3) EPC expressing its intention to grant a European patent based on auxiliary request 2. In an annex, the examining division set out the reasons why it had admitted the third-party observations and why it considered the claims of the main request and auxiliary request 1 to be unclear and thus not allowable."
• " By letter dated 20 December 2019, the appellant indicated that it did not approve the text proposed for grant in the third communication pursuant to Rule 71(3) EPC. It requested a decision which could be appealed if the examining division was not able to grant a patent based on either the main request or auxiliary request 1."'
• "On 25 June 2020, the examining division issued the decision under appeal. The reasoning given for the admittance of the third-party observations and the non-allowability of the main request and auxiliary request 1 is an almost verbatim copy of the reasoning annexed to the third communication pursuant to Rule 71(3) EPC. Compared to the composition of the examining division which had conducted the oral proceedings and which had issued the third communication pursuant to Rule 71(3) EPC, the composition of the examining division which signed the decision under appeal was changed: the first examiner was no longer part of the division, the previous chairman had become the first examiner and a new chairman had been appointed."
• "It is established case law that a signed written decision issued after oral proceedings should be taken by the same members of the first-instance division who conducted the oral proceedings. If a change in the composition of the division occurs after oral proceedings, parties should therefore be offered new oral proceedings."
• "According to Article 18 EPC, oral proceedings should be held before the examining division itself. The right under Article 116(1) EPC to have oral proceedings can therefore only mean a right to have oral proceedings before the examining division in a composition which also takes the final decision on the case. If the division conducting the oral proceedings could be different from that taking the final decision, oral proceedings would be deprived of its purpose and Article 116(1) EPC would be meaningless."
• The decision is set aside, and the appeal fee is reimbursed.
• Compare T 0229/18, where the Chair of the Board retired between the oral proceeding and the issuing of the written decision. These two decisions may not be inconsistent with each other, but it is a rather delicate balance. 

EPO 

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

T 0641/20 - Decisions to admit of the OD

Key points

• The proprietor appeals against the decision of the OD to revoke the patent.
• The proprietor complains about the decision of the OD to admit late-filed document E6 into the procedure and requests the reimbursement of the appeal fee on the ground that it is a substantial procedural violation.
• My comment is that a decision to hold a submission of a party inadmissible can violate that party's right to be heard under Article 113(1) EPC and that if the document is admitted, the right to be heard of the other party can be violated by giving that other party insufficient time to reply, i.e. by taking the decision on the merits too quickly, but not by the decision to admit a document. 
• The appeal decision does not indicate that the proprietor complains specifically about the OD giving him (them?) insufficient time to react to E6 in the first instance proceedings.
• The Board, in machine translation: "The question of whether a discretion was exercised correctly, for example taking the correct criteria into account, is a substantive question of a substantive legal nature and not a procedural law one. Therefore, a substantively incorrect discretionary decision, which was made with the correct application of the procedural rules of the EPC, does not constitute a procedural defect within the meaning of Rule 103(1)(a) EPC."
• "the [proprietor] argued that the E6 does not meet the criterion of prima facie relevance because it does not obviously anticipate all the features of claim 1 of auxiliary request 3 in a way that is detrimental to novelty. The approval was therefore an error of judgment on the part of the opposition division and consequently a substantial procedural violation.
• The Board, hence, sees no substantial procedural violation in how the OD handled document E6.
• Under Art. 12(1) RPBA, E6 is also part of the appeal proceedings. 
  
  
• The OD introduced document E4 into the procedure of own motion.
• "The E4 was introduced into the opposition proceedings ex officio by the opposition division in its decision of June 28, 2018 with reference to the principle of official investigation pursuant to Article 114(1) EPC."
• "[Ex officio] new submissions [by the OD] are possible if prima facie there are compelling reasons to suggest that they are relevant and would completely or partially conflict with the maintenance of the patent (see also T 1002/92, point 3.2 of the reasons)."
• The OD found E4 to be novelty-destroying.
• "The introduction of a new document by the opposition division cannot, in principle, constitute a procedural defect. This applies at least if the criterion of “prima facie relevance” is the basis for this introduction, as was also the case by the opposition division for the introduction of the E4 into the proceedings"
• The Board also examines whether the proprietor had sufficient time to react and finds that this was the case.
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• EPO 

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

T 1598/20 - New objections in the decision

Key points

• The applicant appeals against the refusal. 
• On the admissibility of the amended claims: "As explained by the appellant in the statement of grounds of appeal, the amendments made in the new main request filed on appeal clearly address the objection of added subject-matter raised by the examining division, for the first time, in the decision under appeal." emphasis added. 
• The amendments overcome the objections under Art. 123(2).
• The Board " points out that, in such circumstances, the examining division should have considered the appeal admissible and well founded and, consequently, should have rectified the decision under Article 109(1) EPC. "
• The case is remitted.
• The appeal fee is not reimbursed (or more precisely: there is no order to do so in the decision).
• If the ED raises new objections  "for the first time in the decision under appeal" this is a violation of the right to be heard, and the appeal fee is (normally) reimbursed under Rule 103(1)(a) EPC ex officio.

EPO 

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

T 1564/21 - Poor job of the examining division, no substantive judgment in appeal

Key points

• The application is refused. The applicant appeals. 
• The applicant: "For the avoidance of doubt, we are not requesting remittal and we are not formally alleging that any substantial procedural violation has taken place. We are also not requesting a refund of the appeal fee. However, owing to the poor reasoning that has plagued examination proceedings on this application, we are requesting that the Board exercise its discretion to allow us to file further requests (in addition to or in replacement of the current claim requests) in the event that it raises new objections or presents a logical chain of reasoning that was lacking in the examining division's decision."
• The Board: " The wording of the requests' claims is irrelevant to this decision." 
• The Board considers the decision to be insufficiently reasoned (Rule 111(2) EPC).
• The Board: " The other main reason for refusal seems to be the objections under Article 56 EPC. Here, the examining division merely states that the formulated objective technical problem "cannot be solved by the claimed invention due to a total lack of required technical information" and that "the whole of claim 1 is built on a wish of a hypothetical device". The reader must again speculate whether the real objection is about sufficiency of disclosure, since this reasoning has nothing to do with inventive step. As to the alternative reasoning provided with reference to documents D2, D4 and D5, the cited passages, where they exist at all, have nothing to do with the problem of pairing devices in a surgical hub environment that the examining division had identified, and thus lack a logical chain of reasoning. " 
•  "the board noted that the examining division's statement under point 1 of the communication dated 10 December 2020 (also cited by the appellant), which reads "For the shake [sic] of procedural efficiency and economic use of resources - also of the EPO - it is recommended to consider an appeal [emphasis by the board] based on a written decision.", was an unacceptable invitation for such forum shopping." 
• " The appellant  [ultimately indicated] that it was in favour of the case being remitted to the examining division." 
• The case is remitted. The appeal fee is reimbursed. 

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

T 1200/20 - Ex Div going rogue

Key points

•  A patent application of Apple is refused.
• " The annex to the summons to oral proceedings [before the Examining Division] which followed as the next official action is unusually short. In particular, it does not include a complete feature analysis for the version of claim 1 then on file. Regarding the aforementioned feature, it merely states (point 3) that: "However, the ESOP on point 2, identifies the input, the region and the handler. Again no reasons has been argued [sic]." To begin with, since this feature was not part of claim 1 at the time the ESOP was issued, it cannot have been dealt with in the ESOP. Furthermore, when an applicant adds a new feature to a claim and argues that this feature is novel, the onus lies on the examining division to argue that it is not. At the oral proceedings, when the applicant explicitly requested a more detailed feature mapping, the examining division rejected this request and referred to the feature mapping that had allegedly already been provided in writing" 
• " . At the oral proceedings, the appellant repeated this argument and requested counter-arguments. The examining division refused any discussion and referred again to its written arguments (see the minutes of the oral proceedings, page 1, "Main Request"). However, since the appellant had not argued in its previous written submissions specifically in favour of the novelty of this feature, the written arguments of the examining division in previous communications could not have addressed the appellant's argument. Therefore, the appellant was left to guess what the outstanding objections were with regard to each of these features."  
• On a further point: " At the oral proceedings, the appellant repeated this argument and requested counter-arguments. The examining division again refused any discussion and referred to its written arguments (see the minutes of the oral proceedings, page 1, "Main Request"), even though none of the written arguments of the examining division in previous communications had explained why the contested feature was considered to be implicit." 
• :" As for auxiliary request 1, at the oral proceedings the examining division raised an inventive-step objection based on the combination of D1 with D5. The appellant then requested a 30-minute interruption to study D5 and the combination thereof with D1. The examining division refused this reasonable request, alleging that "D5 was already present in the procedure" (see the contested decision, point 9.1, and the minutes of the oral proceedings, page 2). However, this is factually incorrect. D5 had never been cited in the examination proceedings before; it was merely one of the documents listed in the Search Report. Thus, the appellant faced an inventive-step objection based on new evidence, D5, for the first time at the oral proceedings and was forced to prepare its case without even an interruption of the oral proceedings (cf. T 951/97, point 4 of the Reasons). Basing the decision on new evidence on which the appellant had not had sufficient opportunity to comment was a further violation of the appellant's right to be heard (Article 113(1) EPC)." 
• "  These violations of the appellant's right to be heard amount to fundamental deficiencies constituting special reasons for remitting the case to the department of first instance under Article 11 RPBA 2020." 
• As a comment, when reading such a decision I wonder whether anyone in the EPO's management notices (and bothers) or whether the three examiners will just get full marks for productivity. 

EPO 

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

T 0625/21 - The Examiner uses email

Key points

•  This is an appeal against a refusal decision.
• "After reviewing the decision under appeal and the examination proceedings leading to it, the board notes that it is evident that the examiner entrusted with the examination of the application made some effort to engage in dialogue with the applicant. The examiner made use of different communication channels - written communications, emails and telephone conversations - and last but not least they offered the oral proceedings which the applicant had requested. All this can be seen from both the impugned decision and the appellant's statement setting out the grounds of appeal. The latter mentions the examiner's emails dated 10 October 2019 and 26 October 2020 which cannot be found in the public part of the file."
• "anything not in the public part of the file cannot be reviewed by the board because this part of the correspondence, and what was allegedly discussed in that context, remains unknown. The board simply has no way of forming its opinion on these aspects."
• I always thought the Board had access to the non-public part of the file. I suppose that back in the days of paper files, simply the whole folder was supplied to the Board.
• I suppose that the emails at issue are not even part of the formal non-public part of the file.
• As a separate issue, "The applicant decided not to attend the oral proceedings, arguing that an applicant should not have to attend oral proceedings just to know what the examining division's case is."
• "The board has some sympathy for this argument. Nevertheless, oral proceedings give applicants the opportunity to address not only the examiner entrusted with the examination of the application but all members of the examining division simultaneously (Article 18(2), third sentence, EPC). Therefore, the case would have been discussed with the entire examining division."
• "As explained in R 3/10 (reasons for the decision, point 2.11), the purpose of oral proceedings is to allow a party to make an oral presentation of its arguments, to allow the board (or the deciding instance) to ask questions, to allow the party to respond to those questions and to allow controversial and perhaps crucial issues to be discussed. 
• "Therefore, by choosing not to attend the oral proceedings, the applicant missed an opportunity to advance the case in a discussion with the entire examining division."
• As a comment,  G 4/92 "explicitly relates to inter partes proceedings only". (link)
• As mentioned in CLBA III.B.2.7.2: " In T 1448/09 refusal of the European patent application was based on the common general knowledge as illustrated by document D3. That stance was first taken in the oral proceedings before the examining division, which the appellant did not attend. According to G 4/92, arguments could be presented at any time, even during oral proceedings in the absence of a party, but the same did not apply to new facts forming the basis for a decision. A reference to the common general knowledge could be presented as an argument, but the existence of that knowledge was a matter of fact. If its alleged existence was disputed, the facts relevant in that regard had to be established. That meant that the party against which this knowledge was cited had to have the opportunity to dispute or accept it. In the case in hand, the appellant had neither been aware of the examining division's invocation of the common general knowledge nor of the existence of document D3 until the decision was announced. This violated the appellant's right to be heard on the relevance of document D3 and, by extension, on the existence of the invoked common general knowledge." 
• Still, there was a substantial procedural violation: "From the entire written file under scrutiny on appeal, there is no indication that the examining division carefully considered the applicant's (most) significant or central argument. In particular, there is no explanation as to why it is incorrect, not convincing or immaterial for other reasons. Instead, the examining division merely repeated its view that the feature of the last paragraph of claim 1 did not impose a restriction on the flavour additive."
• Moreover: "The examining division did not explain the facts or considerations on which it based its conclusion []. What is more, by making this statement, the examining division presented yet another conclusion that failed to consider the applicant's (most) significant or central argument. Therefore, the division failed to explain, in a logical chain, the reasons for arriving at this conclusion."

EPO T 0625/21 

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

T 0443/18 - Announcing decisions vs opinions

 Key points

• In this opposition appeal case, the OD had announced during the oral proceedings that the Main Request was not inventive. The OD later reverses on this point. The appellant/opponent considers this to be a substantial procedural violation.
• “The Board concurs with the respondent that the relevant passage of the minutes, which have never been contested, wordily states that, unlike the cases underlying the decisions of the Boards of Appeal and of the Enlarged Board of Appeal cited by the appellant, what was announced and thereafter withdrawn by the opposition division was an opinion without any binding character and not a final interlocutory decision.”
• “the Board observes that after the revision of the initially announced opinion in view of a further distinguishing feature which became apparent to the opposition division only upon discussion of D4' with respect of the auxiliary request 1 [] the object of the discussion was reverted to the main request []  whereby the appellant did have the opportunity to defend its position with respect to the revised conclusion of the opposition division regarding inventive step of the main request. The Board is thus convinced that the review of the non-binding opinion announced by the opposition division in the course of the oral proceedings did not negatively and substantially affect the position of the appellant/opponent in defending its case.”

T 0443/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t180443eu1.html

1. The appellant alleged a major procedural deficiency caused by the circumstance that the opposition division reversed in the course of the oral proceedings a previously announced and binding interlocutory decision according to which the subject-matter of claims 1 and 6 as granted was considered to lack inventive step in view of document D4' combined with general technical knowledge. In the appellant's view the statement of the opposition division reported under point 5 of the minutes had clearly the binding character of a final interlocutory decision which as such and according to established Case Law of the Boards of Appeal (decisions T390/88, G12/91, T0699/99, T0042/02, T1081/02 and [G4/91] were cited by the appellant) could not be reversed. Furthermore, the appellant argued that the review of the already announced and binding interlocutory decision did have an impact on the development of the whole oral proceedings and on its outcome which negatively affected the appellant's position in defending its case.

1.1 The arguments of the appellant are not convincing for the following reasons:

The Board concurs with the respondent that the relevant passage of the minutes, which have never been contested, wordily states that, unlike the cases underlying the decisions of the Boards of Appeal and of the Enlarged Board of Appeal cited by the appellant, what was announced and thereafter withdrawn by the opposition division was an opinion without any binding character and not a final interlocutory decision. This is further confirmed by the fact that the opposition division gave its opinion without having yet announced a decision on the admissibility of D4', which decision according to point 3 of the minutes, last sentence, was intended to be announced later. The Opposition Division indeed decided to admit document D4' only at a later stage, namely after announcing that the subject-matter of claim 6 as granted was not rendered obvious by the combination of D4' and D1 (see point 10 of the minutes, third paragraph).

Furthermore, the Board observes that after the revision of the initially announced opinion in view of a further distinguishing feature which became apparent to the opposition division only upon discussion of D4' with respect of the auxiliary request 1 (i.e. the claimed arrangement of the buffer part on the saw blade housing), the object of the discussion was reverted to the main request (see line 17 of point 8 of the minutes), whereby the appellant did have the opportunity to defend its position with respect to the revised conclusion of the opposition division regarding inventive step of the main request. The Board is thus convinced that the review of the non-binding opinion announced by the opposition division in the course of the oral proceedings did not negatively and substantially affect the position of the appellant/opponent in defending its case.

1.2 In view of the above, the Board concludes that no substantial procedural violation adversely affecting the rights of the appellant/opponent took place, and that therefore, no "special reasons" in the meaning of Article 11 RPBA 2020 for setting aside the decision under appeal and remitting the case to the opposition division can be identified. As a result, the reimbursement of the appeal fee under Article 103 (1) (a) EPC requested by the appellant is not justified.

T 2348/19 - Decision lacking a signature

 Key points

• The decision of the OD was signed by the first and second member and the first member also signed for the chair, i.e. the chair did not sign the decision.
• The Board, in the headnote: “If a member of the department of first instance, who participated in the oral proceedings before that department, is unable to act at the time the reasoned decision is to be issued, for example due to death or a longer lasting illness, one of the other members may sign on behalf of the incapacitated member. However, in such a situation, a written explanation as to why one member is signing on behalf of another must be provided. In the absence of such an explanation, the contravention of Rule 113(1) EPC constitutes a substantial procedural violation”
• “The fact that the chair did not sign the decision, i.e. that the decision is tainted with a substantial procedural deficiency, does not render that decision "null and void" in the sense that it never had any legal effect, contrary to the conclusions drawn in T 390/86 (cf. point 8 of the Reasons). Rather, a reasoned decision affected by such a substantial procedural violation ceases to have a legal effect only if set aside by the competent Board of Appeal (T 2076/11, point 5 of the Reasons; see also J 8/18, point 2 of the Reasons).”
• The case is remitted back to the OD.

T 2348/19 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t192348eu1

Reasons for the Decision

1. Signatures on the reasoned decision and the minutes

1.1 Pursuant to Rule 113(1) EPC, any decision from the European Patent Office must be signed by, and state the name of, the employee responsible.

1.2 The board endorses the established view that this requirement is not just a mere formality but an essential procedural step in the decision-taking process. The name and the signature serve to identify the decision's authors and express that they unconditionally assume responsibility for its content. The requirement laid down in Rule 113(1) EPC is aimed at preventing arbitrariness and abuse and at ensuring that it can be verified that the competent body has taken the decision. It therefore constitutes an embodiment of the rule of law. According to settled case law, a violation of the requirement under Rule 113(1) EPC amounts to a substantial procedural violation (cf. J 16/17, points 2.2 and 2.3 of the Reasons; T 2076/11, point 1 of the Reasons; T 989/19, point 3 of the Reasons). Moreover, a Board may address such a substantial procedural violation of its own motion (cf. T 989/19, point 2 of the Reasons).

{more after the jump break}

T 0074/17 - Harmless error and much more

Key points

• Today's post can be filed under ‘advanced appellate procedure’ and deals with ‘harmless error’, though that is the term in US law. “In United States law, a harmless error is a ruling by a trial judge that, although mistaken, does not meet the burden for a losing party to reverse the original decision of the trier of fact on appeal, or to warrant a new trial.” (wikipedia)
• In EPO terms, a substantial procedural violation of the first instance department is only a ground for setting aside the impugned decision (and remitting the case) if it has a causal link with the order of the decision.
• In this case, the OD does not admit patentee's Main Request and patentee files a new Main Request. Patentee then complains in appeal that the OD's decision to hold the (first) Main Request inadmissible was a substantial procedural violation requesting remittal of the case.
• The Board does not agree or more precisely, considers the question irrelevant. “Daraus folgt nach Auffassung der Kammer, dass ein behaupteter Verfahrensmangel nur dann in einer Beschwerde berücksichtigt werden kann, wenn er sich auf die beschwerdefähigen Teile einer Entscheidung ausgewirkt hat, d.h. wenn er die Partei beschwert hat.” 
• The Board explains that the OD's conclusion that the (first) Main Request was not admitted, was not yet the final decision. The Board, in German: “Jedoch war das Einspruchsverfahren nach der Verkündung der Nichtzulassung des ersten Hauptantrags noch nicht beendet. Durch die Rücknahme konnte die erst lediglich als verfahrensführende Entscheidung wirkende Nichtzulassung eine materielle Rechtswirkung nicht mehr entfalten in dem Sinne, dass die abschließende Zwischenentscheidung der Einspruchsabteilung keine Entscheidung mehr über den ersten Hauptantrag, d.h. weder über dessen Nichtzulassung noch über die Nichtgewährbarkeit enthalten müsste. ”
• The Board indicates that there could be an exception if the OD presses the patentee to give up the inadmissible main request. 
• The Board appears to indicate that a request must be maintained as higher ranking than the requests decided on by the OD. “Dementsprechend muss die Kammer feststellen, dass der erste Hauptantrag durch seine Ersetzung durch den zweiten Hauptantrag implizit zurückgezogen wurde, oder jedenfalls nicht höherrangig war als alle in der Entscheidung behandelten weiteren Anträge.”
  
• Hence, this also deals with the implicit withdrawal of a request.
  
  A number of rules can  be inferred from the decision:
• Filing a new main request implies withdrawal or at least the non-maintenance of the previous main request.
• A conclusion of an OD that a request is not admissible is not a decision not to admit. If the request is subsequently withdrawn but the  OD nevertheless includes the reasons for inadmissibility on the written decision, these reasons are obiter and still not a 'decision not to admit' in the sense of Art. 12(6)(s.1).
• A withdrawal of a request during the first instance proceedings may be non-prejudicial for admissibility of the request in appeal if the withdrawal was made under pressure.
• Non-maintenance in the sense of Art. 12(6)(s.2) refers to maintaining as higher ranking than the requests decided on (found allowable) by the OD.
  
  
  
  
  
  
  
• The Board's reference to Art. 107 [see the full decision text] is not entirely clear to me. Typically, Article 107 (adversely affected) is analysed only with respect to the order of the decision - the opponent can not appeal if the OD revokes the patent finding the claims to be novel but not inventive. 
• A number of requests are not admitted, the other requests involve added subject-matter. The patent is revoked. 
• "Diese Hilfsanträge 1, 4, 7 und 8 scheinen dem Hauptantrag und den Hilfsanträgen IV, VIII und IX zu entsprechen, die mit Schreiben vom 5. September 2016 eingereicht, aber in der mündlichen Verhandlung vor der Einspruchsabteilung nicht weiterverfolgt wurden. Eine Nicht-Weiterverfolgung kommt einer impliziten Rücknahme gleich. " (see Art. 12(6)(s.2) RPBA 2020)

EPO T 0074/17 -  link

3. Hauptantrag - Antrag auf Zurückverweisung und wesentliche Verfahrensmängel

3.1 Nach ständiger Rechtsprechung der Beschwerdekammern setzt eine zulässige Beschwerde eine Beschwer der beschwerdeführenden Partei durch die angefochtene Entscheidung voraus, Artikel 107 EPÜ, siehe weiter Rechtsprechung der Beschwerdekammer (RSBK), 9. Auflage, 2019, V.A.2.4.2.a). Dieser Grundsatz gilt für alle Arten von Beschwerden und auch für solche, deren Gegenstand ein wesentlicher Verfahrensmangel des Verfahrens vor der Abteilung ist, deren Entscheidung angefochten wird. Das Vorliegen einer Beschwer ist jedoch auf der Grundlage der der Entscheidung zugrunde liegenden Anträge und der Ergebnisse der Entscheidung zu beurteilen (RSBK V.A.2.4.2.a). Es ist auch ständige Rechtsprechung, dass ein Verfahrensmangel nur dann als wesentlicher anerkannt wird, wenn er in einem kausalen Zusammenhang mit der Entscheidung steht, in dem Sinne, dass das Ergebnis der Entscheidung von dem behaupteten Verfahrensmangel abhängig sein muss (RSBK V.A.9.5.2).

T 0560/20 - Procedural violation ED

Key points

• An examination appeal with a clear substantial procedural violation.
•  " the reasons for the impugned decision are limited to the finding of lack of inventive step of the subject-matter of claim 1 of the main request on file in view of document D5 in combination with the common general knowledge." 
• " The board agrees with the appellant that the examining division had not raised this objection before. In its previous communications, document D5 had been cited as novelty-destroying, while the issue of inventive step had been discussed on the basis of document D1 or D2 in combination with document D3 or D4." 
• The decision is set aside, the case is remitted, and the appeal fee is reimbursed. 

EPO T 0560/20 -  link

1.2 In the case in hand, the reasons for the impugned decision are limited to the finding of lack of inventive step of the subject-matter of claim 1 of the main request on file in view of document D5 in combination with the common general knowledge. In the decision, the examining division essentially held that the subject-matter of claim 1 differs from document D5 in the thickness of the first membrane layer. As this difference is not related to any particular effect, the objective technical problem to be solved is the selection of an appropriate thickness. The skilled person would prepare a membrane with the claimed thickness without technical difficulties. The subject-matter of claim 1 is therefore not based on an inventive step.

1.3 The board agrees with the appellant that the examining division had not raised this objection before. In its previous communications, document D5 had been cited as novelty-destroying, while the issue of inventive step had been discussed on the basis of document D1 or D2 in combination with document D3 or D4.

In consequence, the appellant had no opportunity to present its comments on the sole ground on which the impugned division is based. This contravened the appellant's right to be heard enshrined in Article 113(1) EPC and constitutes a substantial procedural violation.

T 1414/18 - The application will be refused

Key points

• This is an examination appeal.
• The Board: “A statement such as "the next procedural step will be summons to oral proceedings during which the application will be refused" made prior to a final decision to refuse a patent application may infringe a party's right to be heard and thus may lead to a substantial procedural violation” (and in this case, such statement indeed was a substantial procedural violation).
• The application was refused for lack of unity of invention.
• "In order to properly assess the compliance with Article 82 EPC, the underlying "invention(s)" is (are) to be established on the basis of the technical problem(s) to be solved according to the description of the application in question (see e.g. W 11/89, [] point 4.1; W 6/97, point 6.3; T 173/06, point 8; T 1888/09, point 2.1). This is apparently also endorsed by the Guidelines for Examination in its applicable edition of November 2017 (see e.g. F-V, section 8, second paragraph, and section 8.1, penultimate sentence). 
• The Guidelines 2017, cited paragraph: "In particular, the reasons must highlight the technical problem(s) addressed by the different (groups of) inventions" [F-V, 4.3 in the 2019 version]
• The phrase "the Guidelines for Examination in its applicable edition of November 2017" appears a bit particular.
  First of all, the Boards needs to decide whether the claims have unity of invention and is not bound by the Guidelines. So there is no applicable edition of the GL in appeal, I would say.
  Secondly, as I understand it, the decision-making body applies the GL as in force of on the date taking the decision, unless there are transitional provisions. So when taking a decision in July 2020, the November 2017 edition is no longer applicable.
  I assume that the Board is not reviewing whether the Examining Division applied the Guidelines correctly in 2017 (that is not the purpose of the appeal procedure in my view when it is about the question whether the claims meet Article 82 or not.).
• The Board: “Claim 1 as originally filed thus describes the invention (i.e. the solution to the above technical problem) from the perspective of the [user equipment] whilst claim 2 as originally filed describes the same invention from the perspective of the network node ”. Therefore these claims have unity of invention according to the Board.
• The Board: “Thus, the reasoning of the examining division drawing upon the aspects of a "single general inventive concept", "special technical features" and "non-unity a-posteriori" is moot and does not need further consideration.”
• I note that Rule 44(1) EPC gives a definition of unity of invention focusing on 'special technical features'. Rule 44(1) was introduced by substantially amending Rule 30 EPC 1973 in 1991. That amendment of the Rules 'introduced the special technical feature as a requirement for unity'  (Visser, 2019 ed., p.501). Rule 44 reads: “the requirement of unity of invention under Article 82 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features”. I find it difficult to see how reasoning about 'special technical features' can then be 'moot'. 
• The EPC 1973 included a Rule 30 on the interpretation of Article 82 from the Munich Diplomatic Conference.

EPO Headnote
(1) As to unity of invention under Article 82 EPC, only if the application relates to more than one "invention", the notion of "a single general inventive concept" under Article 82 EPC and the concept of the "same or corresponding special technical features" under Rule 44(1) EPC have to be assessed for the purpose of deciding upon unity of invention (see Reasons, point 1).
(2) As to a refund of further search fees under Rule 64(2) EPC, the decision to refuse a patent application may be understood to implicitly contain the decision to refuse the refund of a further search fee, if the examining division's intent is clear (see Reasons, point 4).
(3) A statement such as "the next procedural step will be summons to oral proceedings during which the application will be refused" made prior to a final decision to refuse a patent application may infringe a party's right to be heard and thus may lead to a substantial procedural violation (see Reasons, point 5).

EPO T 1414/18 - link

Summary of Facts and Submissions

I. The appeal is against the decision of the examining division refusing the present European patent application. The grounds for refusal of the examining division consisted of a mere reference to their latest communication pursuant to Article 94(3) EPC dated 27 March 2017.

II. A partial European search report under Rule 64(1) EPC for the present application had been issued by the search division on 6 November 2014. In an annex to this search report ("sheet B"), the search division indicated that the application contained two inventions and thus did not meet the requirements of unity of invention. The search division found that claim 1 as well as, partially, dependent claims 3 to 13 on file related to the first invention and claim 2 to the second invention, and conducted a search for the first invention pursuant to Rule 64(1) EPC.

In addition, the applicant was invited via EPO Form 1507U to pay a further search fee within two months in order to have the second invention searched, too.

III. After payment of the further search fee, a full European search report covering both inventions was issued on 26 March 2015.

IV. In a communication under Article 94(3) EPC of 22 April 2015, the examining division confirmed the search division's view on lack of unity under Article 82 EPC.

V. In their reply of 1 September 2015, the applicant contested the examining division's assessment of unity of the invention and requested a refund of the further search fee. This request was maintained by their submission of 13 June 2016.

VI. In their further communications under Article 94(3) EPC of 3 December 2015 and 27 March 2017, the examining division maintained their non-unity objection. In particular, the communication of 27 March 2017 included the following statement (cf. point 1, last paragraph):

"In the present case, two searches needed to be performed as claim 1 discloses a broad claim relating to scheduling meanwhile claim 2 is restricted to specific features describing overlapping frames. As seen by the documents cited in the search report, two searches were performed and different documents were found."

In addition, that communication comprised the following closing (cf. points 4 and 5):

"4 As to the reimbursement of the search fee. The preliminary opinion of the examining division is to refuse the reimbursement of such fee ...

5 The next procedural step will be summons to oral proceedings during which the application will be refused (Article 97(2) EPC)."

VII. In reaction to the above communication, the applicant withdrew the request for oral proceedings and requested an appealable "decision according to the state of the file".

VIII. In the statement of grounds of appeal, the appellant requests that the decision under appeal be set aside and, as a main request, that a patent be granted on the basis of the claims subject to the decision under appeal, or, in the alternative, on the basis of the claims of an auxiliary request filed with the statement of grounds of appeal.

It is also requested (again) that the further search fee be refunded.

Reasons for the Decision

1. Unity of invention - originally filed claims (Article 82 EPC)

1.1 According to Article 82 EPC, a patent application "shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept".

That means that only if the application relates to more than one "invention", the notion of "a single general inventive concept" under Article 82 EPC and the concept of the "same or corresponding special technical features" under Rule 44(1) EPC come into play, i.e. have to be assessed for the purpose of deciding upon the question of unity of invention. As a consequence, it is first to be determined whether the present application covers only one or several "inventions".

1.2 In order to properly assess the compliance with Article 82 EPC, the underlying "invention(s)" is(are) to be established on the basis of the technical problem(s) to be solved according to the description of the application in question (see e.g. W 11/89, OJ 1993, 225, point 4.1; W 6/97, point 6.3; T 173/06, point 8; T 1888/09, point 2.1). This is apparently also endorsed by the Guidelines for Examination in its applicable edition of November 2017 (see e.g. F-V, section 8, second paragraph, and section 8.1, penultimate sentence).

1.3 In the present case, the original application as a whole (i.e. including the description and drawings) refers consistently to a single invention, the objective of which is "to provide a method to configure timing resource so that data transmission/reception for D2D communication and normal communication do not interfere with each other" (see e.g. paragraph [0008] of the description as filed). According to paragraph [0029] of the original description, "... [t]he process 50 used for the network node may be in coordination with the process 40 used for a UE ...".

T 0989/19 - Missing signature

Key points

• In this appeal against a refusal, the signature page of the refusal decision shows only two (wet ink) signatures. The decision is therefore invalid and this constitutes a substantial procedural violation. The case is remitted.
• The file also did not contain any indication that the 2nd member was prevented from signing. 
• The EPO recently introduced 'electronic authentication' for first instance departments (OJ 2020 A37; just like the Boards did earlier) but of course, the 'authenticated' stamp of 3 Examiners would need to be visible in the public file in the future and although such a stamp may possibly look like normal text in the public file, perhaps an electronic certificate is present in the internal file as evidence of the signature.

EPO T 0989/19 - link

Entscheidungsgründe

1. Nach Regel 113(1) EPÜ sind Entscheidungen des Europäischen Patentamts mit der Unterschrift und dem Namen des zuständigen Bediensteten zu versehen. Da ferner Artikel 18(2) EPÜ vorschreibt, dass sich eine Prüfungsabteilung aus drei Prüfern zusammensetzt, sind auch die entsprechenden Unterschriften von allen drei Prüfern erforderlich (siehe hierzu auch die Richtlinien für die Prüfung, E-X, 1.3 in der Fassung vom November 2018).

2. Im vorliegenden Fall hat die Beschwerdeführerin das Fehlen der Unterschrift des zweiten Prüfers nicht geltend gemacht.

T 2012/17 - Not addressing the applicant's arguments

Key points

• In this examination appeal for a software-related invention, “the contested decision neither explicitly nor implicitly addresses the appellant's arguments with respect to at least two crucial points of dispute. It follows that the Examining Division infringed the appellant's right to be heard and thus committed a substantial procedural violation.”
• The appeal fee is reimbursed.
• The Board remits the case. " It is therefore questionable whether document D1 is a suitable starting point for assessing inventive step of the subject-matter of claim 1 of the main request. However, inventive step still has to be assessed with respect to documents D2 to D5."

EPO T 2012/17 - link

Reasons for the Decision

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

2. The invention

2.1 The application relates to "web applications" which are to be downloaded to user terminals such as mobile phones. According to paragraph [0018] of the published application, the term web application refers to "a set of information material from which web pages may be constructed". Examples of such information are "images, text, code segments in markup languages such as HTML and XHTML, stylesheets such as CSS, script languages such as JavaScript, video and audio, as well as various browser plug-in content such as Flash, Silverlight and Java Applet content".

2.2 The invention seeks to provide web applications customised to user-specific parameters and terminal-specific properties (paragraph [0006]). Essentially, this is achieved by providing, at an application server, a customisable web application template and, in response to requests specifying user-specific parameters and a user-terminal type, creating the customised web application on the basis of the template, the user-specific parameters and terminal-specific properties corresponding to the user-terminal type.

T 2012/17 - Not addressing applicant's arguments

Key points

• In this examination appeal, “the contested decision neither explicitly nor implicitly addresses the appellant's arguments with respect to at least two crucial points of dispute. It follows that the Examining Division infringed the appellant's right to be heard and thus committed a substantial procedural violation.” The appeal fee is reimbursed.
• The Board recalls that “The right to be heard under Article 113(1) EPC encompasses the right of a party to have its comments considered in the written decision (see decision T 763/04 []). Although a decision does not have to address each and every argument of a party in detail, it must comment on the crucial points of dispute to give the losing party a fair idea of why its arguments were not considered convincing (see decision T 1557/07 []).”
• The Board remits the case because, although “it is [...] questionable whether document D1 is a suitable starting point for assessing inventive step of the subject-matter of claim 1 of the main request”, inventive step still has to be assessed with respect to documents D2 to D5.

EPO T 2012/17 -  link

3.3.2 In its decision, however, the Examining Division did not acknowledge the step of the application server creating the customised web application as one of the differences. Nor did it explain why it disagreed with the appellant on this point.

3.4 Hence, the contested decision neither explicitly nor implicitly addresses the appellant's arguments with respect to at least two crucial points of dispute. It follows that the Examining Division infringed the appellant's right to be heard and thus committed a substantial procedural violation.

3.5 The inventive-step objection being the only ground for the refusal, this procedural violation was causal for the appeal. Reimbursement of the appeal fee under Rule 103(1)(a) EPC is therefore equitable.

4. Remittal

4.1 Given that in document D1 an "application template" is customised by a developer/user (or "an independent customization provider 120") who may essentially freely rewrite the template with the help of a development environment (see page 5, lines 11 to 15; page 16, line 18, to page 18, line 8; Figure 6), the templates of document D1 appear to be unsuitable for automated customisation. It is therefore questionable whether document D1 is a suitable starting point for assessing inventive step of the subject-matter of claim 1 of the main request.

4.2 However, inventive step still has to be assessed with respect to documents D2 to D5.

Moreover, the precise technical meaning of, inter alia, the term "web application" and the feature "wherein execution of the web application requires a respective copy of the web application at the user terminal and an application server" may need further investigation in light of the technical explanations and examples given in the application and the common general knowledge of the skilled person.

4.3 Hence, it is appropriate to remit the case to the Examining Division for further prosecution on the basis of the main request. In addition, the appeal fee is to be reimbursed.

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.

3. The appeal fee is to be reimbursed.

T 0097/14 - After 18 years, further search

Key points

• In this examination appeal, the Board “finds that the decision under appeal is not sufficiently reasoned. Furthermore, the appellant's arguments have not been properly taken into account. Thus, there has been a violation of both Rule 111(2) and Article 113(1) EPC. This is a substantial procedural violation in the sense of Rule 103(1) EPC.”
• Moreover, “the substantial procedural violations in this case are, in the Board's judgment, a fundamental deficiency and consequently a special reason for remitting the case.”
• “The present application has been pending for 18 years [request for EP entry filed in 2004], and in those circumstances, it would be preferable if the case could be finally settled without further delay.”.
• However, the Board is not in a position to settle the case, because the search was incomplete.
• “The appellant expressed doubts whether a Board of Appeal was at all competent to review the field of search. The present Board does not have any doubts in this regard. The Board may exercise any power within the competence of the examining division (Article 111(1) EPC). Since the examining division may review the search, so may the Board.”
  
• As to the requirements for an inventive step objection: “ A reasoned objection of lack of inventive step must establish the state of the art and set out, in a clear and complete manner, which features of the claimed invention are known from the prior art and where those features can be found in the prior art. In other words, a proper feature mapping is required. This is all the more important when the objection relies on non-documentary prior art, because such evidence is more difficult to verify.”. 

EPO T 0097/14 -  link

Reasons for the Decision

1. The invention

1.1 The invention concerns asynchronous web services.

1.2 Traditional web services are synchronous i.e. a client calling the web service has to wait for the server to return the result. The client cannot process other tasks while waiting.

Asynchronous web services, on the other hand, do not require the client to wait. The client calls the web service and then goes on to process other tasks. Once the web server has completed, it returns the result in a callback to the client.

The callback is made to a callback address indicated in the original call.