The application relates to a “Secondary flow path system for a rotor assembly of a gas turbine engine”.
Brief outline of the case
The application was refused by the ED and the applicant appealed.
The board set the decision aside and remitted the case to the ED as the latter had committed several substantial procedural violations.
The case is interesting in view of the behaviour of the ED during the whole procedure.
The procedure in more detail
In the ESO, objections were raised under Art 84 inter alia for lack of essential features and for lack of clarity of certain terms used in the claims, as well as objections of lack of IS.
In reaction to the ESO, the applicant filed amended pages of the description and an amended set of claims. Furthermore, the applicant replied in substance to the objections contained in the ESO, in particular also to the clarity objections. Moreover, the applicant requested OP.
In its first communication, the ED raised new objections under Art 123(2) and 84 in relation to the amended set of claims and maintained most of the former objections. In addition, the applicant was informed that the ED would not admit any further amendments under R 137(3) unless the objections under Art 84 and 123(2) were resolved.
There were further exchanges between the ED and the applicant.
With regard to the outstanding objections under Art 84 and 123(2) the applicant expressed its disagreement and again requested OP.
As regards the issue of IS, the ED referred to its previous opinion without addressing the applicant’s arguments. Furthermore, the ED informed the appellant that it did not “give its consent under R 137(3) to the newly filed set of claims and referred to the Guidelines H-11, 220.127.116.11 and 18.104.22.168). The ED added that the legal effect of this is that there is no agreed text, which would result in a refusal under Art 113(2).
With a letter dated 05.01. 2021 the applicant filed amended pages of the description, withdrew its request for OP and requested a decision according to the state of the file. However, the applicant made clear that it maintained all previously filed arguments and amendments. In particular, the applicant complained about the conduct of the proceedings by the ED, in particular that the “essential feature” objections had not been sufficiently substantiated, that arguments of the appellant had not been taken into account and that the applicant’s request for OP, which would have brought “the examination to a close in an efficient and effective way”, had not been met. Furthermore, the applicant complained about the non-admittance of amendments under R 137(3). In addition, the appellant replied in substance to the objections under Articles 84 and 123(2) EPC.
The pearl in the procedure
In its reply, the ED emphasised that a decision on the state of the file could only be taken if no further amendments and arguments were submitted with the request for a decision according to the state of the file.
The applicant was therefore invited to re-submit his request for a decision according to the state of the file and to withdraw its request for OP.
The ED noted as follows: “With respect to the so far missing summons to OP, as commented by the Applicant: Please note that it is the duty of the Applicant (not of three members of the European Patent Office) to fulfil the requirements of the EPC, to adapt the description appropriately and to provide an admissible and agreeable claim text which is adequate to provide remedy (with promise of success) and with which consensus can be achieved [R 137(3)]; a consensus (or at least an adequate approach) which is worth to spend the time and costs in OP.
The ED added: Please further note that OP increase the workload for three members of the ED and not “reduce” it as supposed by the Applicant. Please further note that a proper amendment should be present as a first step for the ED to do the next step, be it OP or to give consent. In such a case the ED might be in the position to adequately and positively support the interests of the Applicant. Please further note that from the beginning, id est since the first amendments of the Applicant were submitted, the basic requirements of Art 123(2) were not met. Formulating an allowable claim text, also, is not the duty of an Examining Division.” Furthermore, the ED elaborated on its objections under Art 84 and 123(2).
The board’s point of view
The board held that according to established case law the right to an oral hearing is an extremely important procedural right which the EPO should take all reasonable steps to safeguard (T 668/89, T 808/94, T 556/95, T 996/09, T 740/15). If a request for OP has been made, such proceedings have to be appointed. This provision is mandatory and leaves no room for discretion (T 283/88, T 795/91, T 556/95, T 1048/00, T 740/15), i.e. parties have an absolute right to OP. Considerations such as the speedy conduct of the proceedings, equity or procedural economy cannot take precedence over this right (cf. Case Law of the Boards of Appeal, 10th edition, III.C.2.1).
The reasoning contained in the contested decision is thus based on a manifestly incorrect understanding of the right to OP as enshrined in the EPC.
Costs of an OP are irrelevant
The fact that OP cause costs is anyway no reason not to comply with the applicant’s repeatedly expressed wish to hold OP. The reminder in the contested decision of the applicant’s duty to submit an EPC-compliant version of the application documents is also no reason not to comply with a request for OP.
Incorrect application of R 137(3)
The ED’s approach of informing the applicant that it denied approval of the amended documents of the patent application under R 137(3) and that there was therefore no valid text to which the applicant had given his consent under Art 113(2) constituted a SPV. A decision under R 137(3) is a discretionary decision which requires balancing the applicant’s interest in obtaining a patent and the EPO’s interest in bringing the examination procedure to a close. Furthermore, the exercise of discretion under R 137(3) needs to be reasoned.
Since the ED based its non-admittance of the amended application documents on the failure to overcome objections raised under Art 84 and 123(2), the applicant would thus also have had to be heard at the OP on the question of whether these objections had been overcome.
It is therefore clear that the question of admittance of the amended application documents would have required not only a discussion in terms of formal law but, in particular, a discussion in terms of substantive content. The board added that the applicant would have had to be heard on these substantive issues in OP, namely those for which it explicitly requested oral proceedings.
The applicant had no choice but to withdraw its request for OP
For the board, it is evident from the further course of the proceedings that this procedural deficiency adversely affected the entire further proceedings. With regard to the fact that the applicant ultimately withdrew its request for OP, it can only be concluded that the ED’s continual refusal to appoint OP and indeed its explanation for not doing so, made it evident that the applicant was left with no realistic possibility to have its request for OP met.
Thus, maintenance of the request for OP had clearly been rendered futile. The board considered that withdrawal of the request for OP under these particular circumstances did not therefore absolve the ED from its duty to hold the originally requested OP.
Lastly, the board added that it cannot be assumed, merely because the ED issued communications with previous objections maintained, that such objections would be maintained after OP are held and the oral arguments of the applicant in this respect taken into account, nor that the ED would be “overly harsh” in this respect.
The position of the ED has rightly been criticised by the board.
It is amazing to see how the ED dealt with the case, and a communication saying that an OP costs time to the three members of an ED and that the ED is only willing to summon to OP if the applicant is actually more docile, should never have left the premises of the EPO.
That such a conduct of a procedure was manifestly violating applicant’s right to be heard should have been manifest to any TM or director. Not checking by the TM or the director what is going out in case of a refusal should also not happen.
A “pre-emptive strike” under R 137(3) declaring in advance that no further requests would be admitted, without even looking at the requests, is clearly violating the applicant’s right to be heard.
Forcing the applicant to reiterate its request for a decision according to the state of the file and the withdrawal of its request for OP is not understandable.
On the other hand, when reading a blog published in FPC Review with redacted instructions to EDs on how to increase production, the behaviour of the present ED does not really come as a surprise.
In principle, my sympathy goes to my former colleagues, but in the present case it is difficult to express any sympathy for this kind of behaviour.
In passing, the board considered that J 6/22, commented in this blog, was not applicable to the present case and a dynamic interpretation restricting explicitly regulated procedural rights of the parties did not seem to be considered in J 6/22 for the central area of the European grant procedure. This might be disputable, but J 6/22 can be considered as paving the way for further limitations in the right to OP.