EP 3 138 187 B1 relates to parameterizable power supply.
Brief outline of the procedure
The OD revoked the patent as claim 1 as granted, as well as that of AR1A-1C infringed Art 123(2). AR1-3 infringed Art 123(3). AR4-5 were not admitted in the procedure.
The board confirmed the revocation.
The case is interesting in that the proprietor claimed protection of legitimate expectations when it came to an objection under Art 123(2) in opposition.
The proprietor’s point of view
The proprietor essentially argued that it was entitled to rely on the ED’s brief communication of 24.11.2021, in which feature 1.10 – now contested under Art 100(c) – was expressly proposed as being allowable.
By agreeing to this proposal, the proprietor had merely complied with the claim wording suggested by the Office and considered to be correct. It could not be held responsible for any independent error.
Since the OD had now objected to precisely this wording, initiated by the ED, on the grounds that it was not originally disclosed, the appellant had suffered a disadvantage which, in accordance with the principle of protection of legitimate expectations, should not be used against it.
The proprietor also argued that G 1/10 was not relevant, as the error relied upon by the EBA in that decision does not exist in the present case. Rather, the ED had correctly assumed that feature 1.10 satisfied the requirements of Art 123(2).
The board’s decision
The board noted that the principle of the protection of legitimate expectations does not apply in cases such as the present one. In particular, the EBA, in G 1/10, Reasons 11, that even where an error has been introduced by ED, responsibility for the final version of the application lies with the applicant following consent pursuant to R 71(3).
It is therefore incumbent upon the applicant to carefully examine the version submitted to them and to identify and correct any errors. The same must apply to a mere drafting suggestion contained in a brief communication from the ED.
Any error in the granted version or in a drafting suggestion submitted prior to the dispatch of the communication under R 71(3) cannot therefore be remedied by the principle of protection of legitimate expectations.
The board concluded from the proprietor’s submissions that it did not base its claim to protection of legitimate expectations on any error on the part of the ED, but relies solely on the fact that the OD reached a different conclusion from the ED regarding the admissibility of including a specific feature in claim 1.
The substance of the proprietor’s objection is therefore directed against the substantive assessment made by the OD.
However, the principle of protection of legitimate expectations protects parties only against adverse procedural consequences arising from the omission of procedural steps due to incorrect information provided by the EPO.
It has no effect on substantive law and cannot render patentable what would otherwise not be patentable.
In particular, the situation relied on by the proprietor does not differ structurally from other cases in which an OD, in the exercise of its original jurisdiction, carries out a substantive reassessment in the context of examining one of the grounds for opposition.
By its very nature, the opposition proceedings serve precisely to review the grant of the patent, including all substantive requirements such as novelty, inventive step, industrial applicability of the invention or the admissibility of amendments. It is therefore inherent in the system that the OD may arrive at a different assessment from that of the ED.
If one were to accept a claim to protection of legitimate expectations in such cases, this would render the entire opposition system largely ineffective, as virtually any divergent assessment by the OD could be challenged as “contrary to the principle of protection of legitimate expectations”.
Consequently, the appellant cannot successfully invoke the principle of protection of legitimate expectations from the outset, as the consequences it objects to are not of a procedural nature but of a substantive legal nature and thus fall outside the scope of application of this principle.
Comments
It is surprising that in this day and age a proprietor relies to the protection of legitimate expectations to fence off the ground of opposition under Art 100(c), i.e. a objection of substance.
The board rightly reminded that once the applicant has accepted amendments to the claims proposed by the ED in the communication under R 71(3), it has taken over the responsibility of the form in which the patent is granted. It will not help him to allege in opposition that it was a proposal by the ED.
The same reasoning actually applies to any other ground of opposition under Art 100.
It can well happen that an ED grants a patent and it turns out in opposition that one of the documents revealed in the search report was not correctly assessed. The OD can then well come to the conclusion, on the basis of said document, that the independent claim lacks N or IS. Not to speak of the case when a more relevant piece of prior art is brought in the procedure by the opponent.
Comments
7 replies on “T 1044/24-No legitimate expectations when an ED proposes an amendment and the OD disagrees”
Will this decision deter Examiners from giving applicants any hint about what form of claim might be allowable? Or is the proper job of an EPO Examiner, these days, simply to say “NO” to everything, until such time as the applicant offers something allowable?
Is there a difference between i) tentatively suggesting a specific string of words for the claim (not a good idea) and ii) pointing applicant in a particular direction without going as far as to suggest any particular wording (not a bad idea)?
@ Max Drei,
I would not go as far as saying that the job of an examiner is to say “NO” to everything, until such time as the applicant offers something allowable. Playing ping-pong with the applicant is clearly NOT encompassed in the job of an examiner.
My position as examiner, and later as director, has always been NOT to suggest a specific string of words for the claim, as this is clearly NOT the job of an examiner, cf. Art 113(2).
However pointing an applicant in a particular direction without going as far as to suggest any particular wording, is clearly encompassed in the job of an examiner.
To me suggesting a specific string of words for the claim is the same as making amendments of substance to description and/or the claims at the R 71(3) stage. This should be no-go for any examiner. Production pressure being what it is, I can understand but not approve examiners acting in this way.
Examiners should thus not be deterred from giving applicants any hint about what form of claim might be allowable, but it should clearly stop at the hint. This is furthermore an efficient way to bring matters forward.
@ Daniel X. Thomas,
I fully agree with you, and unfortunately I can think of several cases, where the examiner suggested a specific string of words in an Art. 94(3) communication, but the suggestion was ill-advised because it introduced Art. 123(2) issues.
Such suggestions can be hard to handle for the attorney:
Client: “The EPO will grant the patent if we make this amendment, so where is the problem?”
Attorney: “Well, … (explanation many times longer than the question)”
Thankfully, I have always managed to convince my clients to make the right decision… so far. Such suggestions implicitly pressure the applicant into accepting them, and I could clearly do without them.
Excellent comment from Extraneous Attorney. I can confirm that answering the client’s question “Where is the problem” can be challenging, time-consuming and tedious. If an Examiner wants to save their own time and impriove their own statistics by suggesting a specific text amendment to claim 1, is there any deterrent within the EPO that would restrain them from doing so?
@ Extraneous Attorney and Max Drei,
Production objectives or not, it is not the job of an examiner to twist the arm of the applicant. There is no deterrent but the Guidelines. It turns out that cutting corners has become a well-practiced sport, with the tacit support of management.
This explains as well why in certain technical areas the description is never read before search or grant. Art 84 is not a ground for opposition, so why bother…. At least G 1/24 should change this.
In their quest for production, problems a representative could have with a client is not a worry for examiners. To be honest, some representatives are more gullible than others.
It depends a lot on their nationality and national practice. No nationality to be shamed, but it is easy to guess…
Dear Max Drei,
I did not edit your comment because I disagree with it, on the contrary.
I simply have to protect myself. You have said aloud what I tried to have said with more reserve. But I share your conclusions. When I speak with examiners, they are all complaining about the ever increasing production pressure.
Daniel, I understand and accept. You and I can continue “offline”.
Permitting anonymous comments brings benefits but also problems. Nobody has the right to complain, when the person in charge, in their absolute discretion, takes a decision to edit.