EP 4 560 648 A1 relates to generating synthetic training data for training machine learning models.
Brief outline of the case
The decision under appeal is a decision according to the state of the file, which refers to the communication dated 08.12.2025 for the grounds of the decision.
The communication dated 08.12.2025 is the annex to the summons to OP arranged before the ED.
The board found that the ED committed a SPV a remitted the case for further prosecution.
The applicant requested OP, but did not indicate whether these should take place if the request for remittal was not granted.
The board’s decision
Various SPV
In point 2.2 of the communication dated 08.12.2025 the ED analysed the features of claim 1 on which it based its decision. Although page 1 of this communication indicates that the examination was based on “claims, numbers 1-13 filed in electronic form on 06.11.2025”, claim 1 examined in point 2.2 does not include a specific feature.
The ED did not examine this claim feature under other points of this communication, either. In particular, the communication does not mention anywhere the “medical image” limitation that the applicant argues distinguishes present claim 1 from prior-art document D1.
The contested decision is based on a set of claims other than those filed by the appellant, in breach of Art 113(2). This constitutes a SPV because the principle of party disposition hinders the deciding body to go beyond what is requested by the parties and is a fundamental procedural principle.
If this principle is infringed, the party’s right to be heard is equally violated since the party was apparently not heard on the claim request decided upon by the ED, cf. T 647/93, headnote. In addition, by not addressing a feature of claim 1 of the present claim request which the applicant argued was inventive, the ED failed to sufficiently reason its decision within the meaning of R 111(2), cf. T 2475/17, Reasons 1.4, which also constitutes a SPV.
Moreover, the ED did not rectify the decision under appeal by means of an interlocutory revision under Art 109(1), although the applicant had drawn its attention in the statement of grounds of appeal to the fact that not all distinguishing features, including the “medical image” limitation, were considered in the assessment of IS in the decision under appeal.
The fundamental deficiencies apparent in the examination proceedings amount to a SPV.
Request for OP before the board
The board’s decision to set aside the decision under appeal and to remit the case for further prosecution was not held adverse to the applicant.
Consequently, a hearing before the board solely to discuss whether or not to remit the case to the examining division is not deemed necessary or appropriate, see for example, T 1051/20, Reasons 4.2, and the decisions cited therein.
Hence, the decision was handed down without holding OP, with reference to Art 12(8) RPBA.
Comments
Various SPV
I have full understanding that EDs (and ODs) are under a high production pressure. However, such a decision should not have left the EPO’s premises.
The functioning of the present ED was suboptimal. Realising that the claims discussed in the decision were not the latest version of the claims should not have escaped an attentive ED. The first examiner drafted a decision, whereby the second member and the chairman signed the decision without batting an eyelid. The SPV could have been easily avoided. Since examiners work mainly in home office, the present SPV is a direct consequence thereof.
In T 2528/12, Reasons 3.1 and 3.2, the board held that the ED had a duty to grant interlocutory revision, but did not consider not granting it as a SPV, Reasons 3.3.
The present decision confirms T 1034/11, Reasons 5.2-5.3, in which the board held that not granting interlocutory revision represented a SPV.
Not holding OP before the board
I fail to see that a board can skip an unconditional request for OP under Art 12(8) RPBA. Art12(8) RPBA provides simply that, in ex-parte procedures, the board may decide the case at any time after filing of the statement of grounds of appeal.
This is the more so in view of R 16/23, commented in the present blog. In this decision, which led to reopening of the procedure, the EBA held that it is not for a board to decide whether an OP is useful or not. The request for OP was conditional.
In view of R 16/23, dated 21.11.2025, T 1051/20, and the decisions cited in Reasons 4.2, are not any longer applicable.
In the present case, the board should have invited the applicant to file a conditional request for OP.
Comments
Leave a comment