CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 2649/18 – No interview with the rapporteur - Do not confuse procedure and substance

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The application concerns an anti-theft system for a straddle-type vehicle, in particular a motorcycle comprising a GPS system attached to the motorcycle.

Brief outline of the file

The ED decided that the subject-matter of claim 1 of each of a MR and AR 1 to 3 lacked IS. AR 4 had been found allowable, with minor amendments, but the applicant disapproved the proposed grant of a patent in this form. The applicant did not, inter alia, approve the amendments to the description to the claims consisting in the deletion of “preferably” in two places in the description.

The application was refused and the applicant appealed the refusal.

With the notice of appeal, the applicant filed claim sets for a MR and AR 1 to 4. They differ from those underlying the appealed decision only in that, in each set, three reference signs are corrected, and one comma is added.

The applicant additionally requested an informal interview, and the case’s remittal to the ED on the ground of an alleged procedural violation.

In the preliminary opinion accompanying the summons to OP the board took a negative view in respect of all these requests.

The MR was considered lacking IS. The same applied to AR1-3.

AR 4 considered allowable by the ED was considered lacking clarity due to an “and/or” combination in the claim.

Eventually, the case was remitted to the ED with the order to grant a patent on the basis of the claims of AR 4b filed at OP before the BA, and to adapt the description and drawings, as necessary.

Claim 1 of AR 4b is a combination of originally filed claims 1, 3, and 4, wherein the formerly optional features are no longer optional.

Request for interview with the rapporteur

For the board, there is no right to an informal interview, whether by telephone or otherwise with the rapporteur. The board referred to the Case Law of the Boards of Appeal, 10th edition, III.C.2.1.3.

The applicant was informed of the board’s negative view in this respect by the preliminary opinion and had the opportunity of defending its case both in writing and at OP.

The board did not grant the request for an informal interview.

The alleged procedural violation

The applicant’s position

According to the applicant, the ED applied ex post facto analysis in its inventive step reasoning starting from D1. In particular, it failed to identify a “recognizable pointer” to the solution in the prior art.

Further, the ED did not react to the applicant’s request to do so, and nor did it indicate any legal basis for judging inventive step in the absence of a recognizable pointer.

This was a substantial procedural violation.

The boards ’position

The board noted that, in its decision, the ED applied the problem-solution approach starting from D1 and combining it with D2. The decision identified a difference and the technical effect of said difference.

Furthermore, an explicit pointer to the solution, as demanded by the applicant, is not generally required. In this case, the ED established a problem that realistically poses itself to the skilled person. Given the nature of patent documents, there is an intrinsic motivation for the skilled person to realize a device described in a prior art patent document and to fill missing teachings using the common technical knowledge.

In order to solve the problem identified by the ED, the skilled person would, in the absence of explicit pointers, resort to its common technical knowledge. If there are well-known solutions to the problem, then choosing one of these well-known options is likely to be obvious, if there are no reasons pointing away from it.

In this case, there are well-known ways of attaching objects to one another, one of them being to use the underside of the GPS unit for attachment using common means such as a screw or glue. Also, there is no reason not to use the underside in D1. The skilled person did not have to draw on the knowledge of the invention to realize this attachment.

The decision, therefore, provided a complete reasoning of lack of an IS that follows the problem-solution approach, irrespective of whether one agrees to its conclusion or not. The reasoning implicitly counters the applicant’s objections, which means that the right to be heard was also respected.


Request for an interview with the rapporteur

Boards of appeal are not to be confused with ED. A request for an interview is regularly dismissed. See for instance T 1461/12. Besides the fact that there is no legal basis for interviews with a deciding body of the EPO, boards are not inclined to accede to such requests in view of the workload of their members.

It is possible to request an informal interview with the examiner in charge, but this is not a procedural right. Refusing an interview is not considered a procedural violation, let alone a substantial one. See Guidelines C-VII, 2.3. However, if an interview is refused, the following decision should be properly reasoned.  

Deciding on the substance of claims is not a procedural task

In T 2662/16, the board held that “Separating technical features from non-technical features, identifying the closest prior art, defining the skilled person’s common general knowledge and considering its application for solving the posed technical problem cannot be considered procedural tasks. Instead, these activities relate to judging in substance whether or not an invention involves an IS. Consequently, whenever one of these activities was performed incorrectly, this would pertain to an error of judgement rather than to a procedural violation.”

An error as to the substance by the legal division is not a procedural error, cf. J 12/19.

By the way, should it be necessary to find a “pointer” in the prior art in order to decide for lack of IS, lots of patents would have to be granted. Very often common general knowledge is the link between documents and acts as a pointer.  

Amendment of the description

It will be interesting to see whether the applicant will accept the adaptation of the description by deletion of “preferably” the applicant refused this amendment after receiving the communication under R 71(3).

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