EP 2 499 526 A2 has been published as WO2011/ 059929 and relates to a method and apparatus for coupling optical signals with packaged circuits via optical cables and lightguide couplers.
Brief outline of the case
The ED refused the application on the basis of Art 97(2) because of “lack of claims“, cf. Art 113(2) and 78(1,c). The only set of claims on file was not admitted by the ED under R 137(3). The applicant appealed the refusal.
In appeal, the applicant requested that a patent “be granted with the original [sic] filed claims, with the claims filed when entering the European Phase or, otherwise, with any of the amended set of claims filed during the patent application prosecution”,
In a communication under Art 15(1) RPBA, the board informed the applicant of its provisional and non-binding opinion that the ED’s decision not to admit to the proceedings the only set of claims on file should be maintained.
Moreover, since none of the other sets of claims filed during the examination proceedings was underlying the appealed decision, none of them was to be admitted to the appeal proceedings pursuant Art 12(6) RPBA.
As the applicant did not reply to the provisional opinion of the board, the latter became final and the refusal confirmed.
The present case is interesting in view of the fact that 11 communications had been issued by the ED and 2 OP had been held.
The applicants point of view
According to the statement of grounds of appeal, the applicant provided essentially the following arguments in favour of admitting a set of claims into the proceedings
– The examining division’s objections were wrong.
– The main objections under Art 123(2) and 84 relate to an amendment made in the claims introducing the term ‘lightguide coupler’. However, “[t]he ED must have known that lightguide couplers were already recited in the original application, even in the title, being a clear and known term” .
– “[D]ue to technical/computer problems, connection problems and, afterwards, audio problems, with the videoconference, Mr. Erlberbaum the inventor/applicant could not talk in the OP“.
– “The ED should have searched to find what is [sic] the term [lightguide coupler] stands for. In short, the lightguide coupler comes from a name (and trademark)”.
– “So, the issue involved a term or name (lightguide coupler) amended as original filed in the application [sic]. Elbex did change the name to lightguide coupler […] for its very small device, to be a lightguide coupler”.
The board’s decision
The board held that:
(a) the applicant’s interest in obtaining a valid patent has been sufficiently taken into account by the ED. Additionally, “the division proposed a number of suggestions how it would be possible for the applicant to overcome numerous pending objections”,
(b) the EPO’s interest in bringing examination to a close was more than justified, especially since “that during entire examining procedure not a single request was filed complying with Art 123(2) “. As explained by the ED during the second OP, “the procedure had been very long and […] the applicant had been given many more chances than usual”, cf. minutes of the second oral proceedings, point 10.
(c) The applicant had been given at least one opportunity to amend the application.
(d) The applicant returned essentially to a claim which was already considered unallowable by the ED. Returning to unallowable claims without providing convincing reasons goes against the need of procedural economy.
(e) The amendment of claim 1 in the last entry of the applicant, i.e. adding the word “sharp”, was not suitable to overcome any of the objections at stake. The applicant did not explain at all why claim 1 had been amended by specifying that the cutting is a sharp cutting.
(f) The ED provided a brief, yet sufficiently compelling rationale for the non-admission of the last set of claims.
(g) The applicant had been warned about the ED’s intention to use R 137(3).
(h) The last amended set of claims was filed at a very late stage of the proceedings, namely after the summons for a OP. However, the later the stage at which amendments are filed, the more restrictively the discretion not to admit these amendments into the proceedings could be exercised.
In the board’s view, the ED’s discretion was thus exercised in accordance with the right principles, and also not in an unreasonable way, on the contrary.
The board also noted that the applicant has not put forward any special circumstances why the last set of claims should be admitted to the appeal proceedings even though the ED had not admitted it to the first-instance examination proceedings. Nor did the board see any such circumstances.
If the board would grant the applicant’s request that a patent “be granted with the original [sic] filed claims, with the claims filed when entering the European Phase or, otherwise, with any of the amended set of claims filed during the patent application prosecution”, this would require the board itself to examine and take a final decision on sets of claims on which the ED had not taken a final decision. This is contrary to the primary purpose of the appeal proceedings, i.e. to assess the correctness of the first-instance decision.
From the arguments of the applicant, the board could not discern any justification for the applicant’s view that the ED was wrong in finally not admitting any claims into the proceedings.
In particular, the board noted that the applicant was represented at the OP by a professional representative who stated that “he had brought forward all his arguments concerning why the division should consent to the amendments”, cf. minutes of the second OP, point 12.
Comments
It is rare that in examination 11 communications and 2 OP are needed to come to the conclusion of the proceedings.
As the inventor/applicant was a natural person, the ED was very lenient.
I am inclined to think that the applicant was probably misled by the positive IPER established by the Korean PO. The EPO did not endorse the position of the KPO.
An objection under Art 123(2) was raised for the first time in the opinion annexed to the SESR and was present throughout the whole procedure.
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