EP 3 392 719 A1 relates to a process cartridge and an electrophotographic image forming apparatus which uses the same.
Brief outline of the case
The ED refused the application for infringement under Art 76(1) over the parent and the grand-parent application.
It all turned out whether a coupling member, for example an Oldham coupling (in the figure 21-22-23), could be omitted or not.
The board agreed with the ED, that this could not be the case.
AR1=former AR5, was admitted by the board, in spite of representing an amendment to the applicant’s appeal case.
The board remitted to the ED for further prosecution.
In this blog, the topic relates to the admissibility of AR1.
The applicant’s position on the admissibility of AR1
AR1 was filed for the first time with the appellant’s statement of grounds of appeal. It is thus an amendment to the applicant’s appeal case which is to be admitted at the board’s discretion under Art 12(4) RPBA.
The applicant argued that it wished an opinion by the BA on the disputed question of added-subject matter.
Had it filed the AR5 during the examination procedure, it would have received a patent without any possibility to have the question assessed by the BA.
It had filed AR5 at the earliest possible stage of the appeal proceedings, i.e. with the statement setting out the grounds of appeal. Since the added feature corresponded verbatim to the omitted feature and the remaining claimed subject-matter was the same as in the main request, there was no additional burden for the board if it admitted the AR5.
The applicant added that, since it intended to pursue the claimed subject-matter in a further divisional application in case the board would not admit AR5, admitting the AR5 would actually contribute positively to the economy of the procedure, since a new granting procedure relating to such a divisional application would be avoided.
The board’s decision on the admissibility of AR1
The board noted that according to Art 107, it is an undisputed right of the applicant to contest the decision of the ED and seek a judgment on the question of added-subject matter by a BA.
It is evident that in view of the ED’s conclusions, the applicant had no choice but to maintain its MR and to file an appeal if it wanted an opinion of the boards on the same question of added subject-matter.
Regarding the filing of AR5, it is true that there was the procedural possibility to file it during the examination procedure. If the appellant had filed it then and at the same time maintained the MR, it would have still had the possibility to refuse any intention to grant based on AR5 issued by the examining division and receive a refusal which it could then have appealed.
This handling would not have made any essential difference to the board’s task compared to the current procedural situation, since the board would have still been faced with the judicial review of the decision to refuse the MR on the ground of added subject-matter, as well as with the assessment of whether AR5 overcame the reasons for the refusal.
The only difference to the current procedural situation the board saw is that in a hypothetical decision under appeal after the applicant’s refusal of the intention to grant a patent based on AR, an indication by the ED that AR5 met the requirements of the EPC could have been included.
This did not present an additional burden for the board, however, as it intended to remit the case to the ED for further examination.
In addition, the board agreed with the applicant that admitting AR5 request and remitting the case to the ED will allow the case to come to an end in a more efficient way that by obliging the appellant to pursue a further divisional application with the same subject-matter from the start.
The board considered thus that the circumstances of the appeal justify the admittance of AR5 into the proceedings, and decided to admit it under Art 12(4+6)) RPBA.
The board remitted the case for further prosecution
Comments
It is certainly an undisputed right of the applicant to contest the decision of the ED and seek a judgment on the question of added-subject matter by a BA.
However, it is not an undisputed right of the applicant to only file an AR overcoming the objections raised by the ED when entering appeal.
Other applicants/proprietors have seen their application refused for good or their patent revoked for good by not filing an AR overcoming an objection raised during first instance proceedings.
The board merely remitted to the ED, so it did not have any work. Plenty of other applicants/proprietors would have liked in the same situation to see their AR filed upon entry of the appeal procedure to be admitted and the case remitted for further prosecution.
The present decision shows once again that when filing an appeal, procedural decisions of the boards amount to a lottery. In the present case it was to the benefit of the applicant. In the vast majority of the cases, a request filed only when entering appeal is not admitted. Even carry-over requests are not admitted.
As we were in examination, the applicant could indeed have filed a divisional application. For the board it would not have made any difference, but the applicant would have had to pay some fees.
It is a classical move to file a divisional application on the eve of an OP before an ED. As the fees due can be paid within a month, the divisional can be dropped by not paying the fees, should the decision of the ED be positive.
In the present case, the board appears to have confused “economy of the procedure” with “economies for the applicant”.
The applicant is far from being at the edge of bankruptcy if he had to fork out some fees, so the position of the board is difficult to understand and/or defend.
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