EP 2 526 241 B1 relates to a stair tread element, such as a stair tread cover element or a stair tread renovation element.
Brief outline of the procedure
The OD maintained the patent according a MR filed during OP before the OD.
The opponent appealed.
The board held that the OD committed a SPV and remitted the case for further prosecution.
There is no surprise that the proprietor found that the OD did not commit a SPV as submitted by the opponent.
The board’s decision.
According to point 45 of the minutes, the opponent raised an objection against claim 1 as maintained on the grounds of lack of N with respect to D14.
According to point 46 of the minutes, this objection was discussed and substantive arguments were presented by the parties concerning whether a given feature was disclosed in D14.
According to point 47 and 48 of the minutes, the OD took a break for deliberation and immediately afterwards announced its conclusion that the subject-matter of claim 1 was novel over D14.
The contested decision does not include any points focusing on the discussion of N, and the contested decision only discusses inventive step starting from D14.
The contested decision does not contain the reasons why the OD did not deem the arguments put forward by the opponent persuasive with respect to the alleged disclosure of said given feature in D14.
The decision merely repeats the acknowledgement by the opponent of the OD’s conclusion which had been previously announced to the parties, but it does not explain the OD’s arguments for having taken this decision.
The contested decision did thus not provide any reasoning as regards the novelty of the maintained MR at all and for this reason violated R 111(2).
Comments
It is manifest that the cooperation between the members of the OD was sub-optimal.
The first member has drafted a decision, and the second member has drafted minutes, but neither the first examiner nor the minute writer have cross-checked the decision and the minutes for coherence between each other.
The chair of the OD has manifestly signed the decision and the minutes without spotting the incoherence between the two documents.
The same pattern can be observed in T 655/23, T 0805/24, T 821/21, T 910/23, T 2396/22, or T 1196/23.
Some explanations come to mind:
- the members of first instance division do not sit together during OP as those are systematically held by ViCo
- the members of first instance divisions work mainly in home office and have little opportunity to meet on EPO’s premises
- the production pressure is ever increasing
In my opinion, the problem does thus not lie primarily with the examiners.
But the EPO claims delivering a work of high quality…..
Comments
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