EP 3 596 694 A1, published as WO 2019/150160, relates to „A publicly accessible urban beach entertainment complex including a surf feature with a centrepiece man-made tropical style lagoon and method for providing efficient utilisation of limited use land”
Brief outline of the procedure
The applicant appealed the refusal for added subject-matter, lack of clarity and inventive step.
The decision was not rectified and the case was transmitted to the board.
The case is interesting in view of the way the case has been dealt with after receipt of the SGA.
- Through a routine check the board established that the examiners’ signatures on the corresponding form did not match the names of the examiners who issued the decision.
- The board became aware that four days after filing the SGA, all members of the ED were replaced, one of the newly appointed examiners being a director. Internal Form 2701 bears the signatures of the newly appointed members.
- The board also noticed, an extensive internal note containing a complete analysis of the application was added to the non-public part of the electronic file visible by the board.
The board concluded, as in the parallel case T 758/23, that the way the case was dealt with amounted to a SPV.
The case was remitted to the first instance for further prosecution.
Board 3.5.01 was in charge of the present case.
The board’s decision
For the board, it was clear that the internal note containing comments and conclusions on the substance of the case violated the requirement to remit the case “without comment“. In particular, by providing comments on the merits after issuing the decision, the ED went beyond the role assigned to it under Art 109(2) and thereby undermined the devolutive effect of the appeal.
The board judged that this procedural flaw constitutes a SPV justifying a remittal to the ED for further prosecution.
The board noted another peculiarity in the case: four days after filing the grounds of appeal and by the time the internal note was drafted, the entire ED had been replaced. It thus appears that the internal note, which is unsigned, was drafted by one of the new members of the ED to assist the other two members in deciding whether to rectify the decision.
Thus, this note as well as the whole procedure under Art 109 did not even serve the purpose of an interlocutory revision which is to allow for a rectification of the contested decision by the ED that has taken this decision, but rather represented a complete re-examination of the file.
The arbitrary replacement of the ED is not supported by a reasonable interpretation of the Guidelines for Examination. The board considered that this interpretation should not be expanded to include arbitrary “necessary steps”.
Just because the President of the Office or any delegee has the power to do something does not mean that they should do it. It may legitimately be expected of an Office that decides on the grant of significant rights to applicants that procedural steps are not exercised arbitrarily.
Rather, such steps should be subject to reasonable safeguards in order to avoid the perception that they are exercised for reasons unrelated to the purpose of the procedure. here, to check whether it is immediately apparent from the reasons given in the grounds of appeal that the decision cannot stand.
The applicant’s view that the new ED was not in a position to review all relevant aspects of the decision to the same extent as the original ED would have been and thus was less likely to grant, although speculative, illustrates one of the concerns to which such an arbitrary departure from established procedural practice may give rise.
For the board, a final unfortunate conspicuity is the fact that one of the newly appointed examiners was a director. Since, as mentioned above, the director appears to decide on divisions’ replacements, it could be perceived badly if they place themselves in a position to reverse issued decisions, without a known good reason.
In light of the above considerations, in the board’s view, all replacements of examiners should be made public and any deviation from the narrow and clearly defined reasons for replacement mentioned in the Guidelines for Examination should be kept to a minimum.
With a view to avoiding similar situations in the future, the board found it advisable that the part of Form 2701 which includes an indication whether the decision is rectified and the examining division’s signatures is made public. It also appears advisable to adapt this form such that the names of the examiners are printed, and not only indicated by handwritten signatures, as is now the case.
Additionally, it seems advisable to provide an explanation for each replacement, preferably in a public part of the electronic file, in order to dispel potential concerns.
Furthermore, it was not clear to the board whether it is in fact possible to keep documents in the non-public part of the electronic file that a board cannot see. If it is not possible, then it seems that the Guidelines for Examination should be amended to provide some guidance to avoid this problem.
Comments
It is well known that a whole technical domain has been transferred to a new directorate. The reason for this transfer was that the original directorate was much too restrictive and refused too many applications.
It is an open secret that, since the transfer the number of refusals in this domain has dwindled drastically. It even seems that the corresponding board could get out of work.
Interlocutory revision is dealt with in the Guidelines E-XI, 7.
The last § of E-XI, 7.1 reads
In either case, whether the appealed decision is rectified or the appeal is remitted to the board, a decision issued by the examining or opposition division may be signed only by the examiners belonging to the division at the time of signature. If an examiner is absent for a long period or has left the department, a new member must be appointed to the division.
It is manifest that the division at the time of signature means the members of the division having signed the refusal, as only those members know about the case, and are in a position to decide whether the decision ought to be rectified or not.
In the old time of paper files, all internal notes were removed from the files and only the non-public part of the file necessary for the board to know, as well as the public part of the file were forwarded to the board. It was even requested not to leave any annotations on the paper prior art documents in the file.
It is thus surprising to see in time of electronic files, that a non-signed internal note was to be seen by the board. This is by no means fortuitous. One could go as far as to think that the new director wanted to inform the board about its views as to how those kind of files have to be dealt with. It is certainly not the purpose of interlocutory revision under Art 109 to completely re-examine the case.
It does belong to the prerogatives of a director to change the composition of a division as he thinks fit. Unless there are special circumstances justifying the presence of a director as member of a first instance division, it is not common that a director puts himself as member of a such a division.
In T 866/24, commented in the present blog, board 3.5.05 complained about the fact that EDs does not check dependent claims for clarity. The same directorate is in charge of the domain dealt with in T 866/24. The domain “Telecom” at large is also dealt with by the same directorate.
The director at stake is well known for getting out of his directorate an extremely high production.
I do however understand that the boards having to deal with files coming from this directorate, are getting fed-up and need to complain.
It will be interesting to see whether
- The remittal ends with a grant, and which ED will be deciding,
- The corresponding forms and the Guidelines will be amended following the suggestions made in the present decision.
Comments
2 replies on “T 0759/23-Changing the composition of an ED before deciding on interlocutory revision”
@ Daniel X. Thomas,
Your comments are amply confirmed by §20 of the reasons for the decision, which read:
“20. Finally, the Board tends to believe that at least some of the above considerations apply to the replacement of examiners or an examining division at any time during the examination of an application. The Board is aware that recently the lack of transparency in this regard has attracted attention, with several open letters from stakeholders both within and outside the Office. These letters criticised more apparent situations where, after a negative communication or decision, a newly appointed examining division directly proceeded to grant a patent.”
It is remarkable (at least in my opinion) that a Board has gone so far as to make this comment in a decision.
@ Extraneous Attorney,
I was fully aware of § 20, but did not mention it on purpose. Thanks for doing it.
I preferred insisting on the amendments of the procedure the board holds advisable.
What matters for some people within the EPO, is to grant as many patents as possible in the minimum time. Only granted patents bring annual fees. In a sense, the AC is helping in this endeavour. In my active time, I often heard the comment, that if a third party is not satisfied, it has to file an opposition. This is not what the EPO has been set up for.
It is however not frequent that a director puts himself in an ED in order to force a certain outcome of the procedure, when he is dissatisfied with the way a procedure goes forward. But when the aim is to grant as many patents as possible within the minimum time, the end justifies the way to achieve this aim.
A director is not the fourth member of an ED, and it is only if he puts himself in a division that he can force the outcome he wishes to see. Which normally constituted examiner would dare contradicting his director, knowing that he can have a direct effect on his career.
The two decisions T 758/23 and T 0759/23, as well as T 866/24, simply show that boards are simply fed up having to deal with files coming from a certain directorate.
It might be remarkable that boards go so far as to make some comments in a decision, but I do have sympathy when they say enough is enough.