CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1341/20 – Refusal to postpone OP – No communication on N and IS when claims lack clarity

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The application relates to an input protection circuit for an analog optocoupler.

Brief outline of the case

The applicant appealed the decision of the ED refusing the application for lack of clarity of all the valid requests.

The board confirmed the lack of clarity of all the valid requests.

The application was thus refused for good.

The case is interesting in that the applicant requested postponement of the OP and the issuance of further comments on N and IS. Those requests were not granted.

The applicant’s requests

In reply to the summons, the applicant requested, inter alia, postponement of the OP in view of opposition proceedings concerning the European patent EP 3227257 and also requested that the board issued an additional comment on N and IS.

The board’s point of view

Request to postpone the OP

‘When refusing the postponement of the OP, the board noted that

  • The request for postponement was not filed as soon as possible after receipt of the summons, cf. Art 15(a) RPBA20.
  • From the file of EP 3227257 it does not appear that the representative in the present case was also authorised in the opposition against EP 3227257.
  • The OP in EP 3227257 was scheduled as a ViCo. The board was thus not convinced by the representative’s arguments relating to necessary travel arrangements and logistical planning.
  • There were a few days between the OP in opposition and the OP before the present board.

The board emphasised in the decision that it is the onus of the party to provide all relevant facts and arguments already in the request for postponement.

Once the board has issued a decision with respect to the subject-matter invoked for the postponement, the board is not forced to issue a further decision each time the party provides additional arguments relating to the same subject-matter.

Request to receive comments of the board on N and IS

With reference to Art 15(1) RPBA20, the board argued that is not obliged to give a preliminary opinion but may do so.

Moreover, since the main objective of the communication under Art 15(1) RPBA20 is to help concentration on the essentials during the oral proceedings, and this Art does not require an assessment of all objections that might become relevant in the communication.

As the claims were lacking clarity, the board did not consider it appropriate to give some comments on N and IS.


Request to postpone the OP

It looks rather naïve from the side of the representative that the board would not check the reasons given for the postponement. The present representative actually claimed that he was meant to act as IP counsel for the opponent, but he was not the actual representative of the opponent.

Conclusion: boards do not like to be taken for a ride.

Further comments on N and IS

It is manifest that in case of a serious lack of clarity, it does not make sense to discuss N and IS.

British courts might do so, but this is not EPO practice.

In examination, an ED might give a possible interpretation of the claims and based on this interpretation give a provisional opinion on N and IS, but it is not obliged to do so.

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