EP 3 889 761 A1 relates to a message processing method, a related apparatus, and a system.
Brief outline of the case
The application was refused in that the MR did not comply with Art 123(2) and 84 and that AR1-3 did not comply with Art 84.
The ED held that the claim at stake in the MR amounted to an undisclosed intermediate generalisation.
Claims 1-3 and 10-12 of AR1 were deemed lacking clarity as only the objections under Art 123(2) were overcome, but not those under Art 84.
OP by ViCo were summoned by the board, but the applicant declared beforehand that he would not connect. The decision was thus taken in written proceedings, cf. Art 12(8) RPBA.
The decision is interesting in that it dels with the “essentiality test” and to the non-admittance of AR4.
The applicant’s point of view
Deletion of features
The applicant argued that this deletion was allowable according to the “three-point essentiality test” established by T 331/87.
Admissibility of AR4
The applicant submitted that “the exact and final reasons against the rejection of AR 1 only became clear in the final first instance decision such that it could not have been filed earlier”.
The board’s decision
Deletion of features
The board was not convinced by the applicant’s argumentation
The board noted that, in recent, and now well-established, jurisprudence of the boards, the so-called “essentially test” is no longer considered appropriate and referred to T 1852/13, Reasons 2.2.
Instead, the “gold standard” for assessing compliance with Art 123(2) is that amendments must be directly and unambiguously derivable from the application documents as filed, taking account of matters implicit to the person skilled in the art, see G 2/10.
In the case at hand, as the ED rightly observed, it is not directly and unambiguously derivable from the application as filed that the deleted features are merely optional features of the method of the invention.
Claim 1 as originally filed had two features (i) and (ii), which were later deleted by the appellant.
In this respect, the board confirmed the ED’s decision.
The board further noted that the amendment made in feature (g) is also an arbitrary extraction of features from an embodiment, which is not directly and unambiguously derivable from the application as filed.
For the board, an embodiment that relies solely on five specific interface elements according to feature (g) is however not directly and unambiguously derivable from the application as filed.
In claim 1 of AR1, the deleted features (i) and (ii) of claim 1 as originally filed were re-introduced into features (f) and (g). The objection relating to the deletion of features (i) and (ii) was thus overcome.
However, the objection under Art 123(2) raised against the deletion of some features in feature (g) still applied to claim 1 of AR1-3.
Non-admittance of AR4
The board noted that it is the normal consequence of filing a request in reply to a summons to OP and then not attending those OP that “the exact and final reasons” for rejecting the newly filed requests become clear in the written decision.
The applicant cannot use its absence at the OP before the ED as an excuse to misuse the appeal proceedings as a continuation of examination proceedings.
Thus, such a request should indeed have been filed already during the examination proceedings, cf. Art 12(6), second sentence, RPBA).
Comments
It is difficult to follow the applicant’s representative in its argumentation.
Deletion of features
Any deletion of features in a claim, especially in and indepenpent claim originally filed, is ringing the bell of intermediate generalisation. It has then to be checked whether the deleted features are optional or not. If the deleted features are not optional, then Art 123(2) hits badly.
Referring to the “essentiality test” under T 331/87, allows the conclusion that the representative is neither up to date with the case law of the boards, nor aware that even in the Guidelines the name “essentiality test” has been replaced by the name “three-point test”, cf. Guidelines H-V, 3.1. The content has remained the same as in the past, just compliance with G 2/10 has been added.
Without going as far back as T 1852/13, there are more recent decisions of the boards dealing with the “three point test”. See T 79/21, commented in this blog, or T 422/23, also commented in the present blog.
Although the boards are at loggerheads with it for quite a while, e.g. T 2311/10, the “three-point test” is still mentioned in the Guidelines H-V, 3.1 so that first instance divisions are still allowed to use it. Applied properly, it leads to the same result as the “golden standard” defined in G 2/10.
In the present case, it was not fulfilled, and hence neither was G 2/10.
Absence at the OP
As to the extremely late notification of non-attendance at the scheduled OP, the board recalled that it is no more than the usual degree of courtesy owed to a board that a party’s intention not to attend the OP is communicated as early as possible, cf. T 13/19, catchword.
Article 6 of the Code of Conduct of members of the European Patent Institute (epi), of which a qualified representative is obligatorily a member, stipulates that the members are required to act courteously in their dealings with the EPO. See also epi Information 4/2009, pp. 133-134.
Not only did the representative not connect to the ViCo before the board, it did also not connect to the ViCo before the ED.
The objection of lack of clarity was raised by the ED throughout the examination procedure. Not connecting to the ViCo before the ED and claiming that the clarity objection in AR1 was only understood when receiving written decision, was adding insult to injury.
In its notice of appeal, the representative even requested the reimbursement of the appeal fee. In the statement setting out the grounds of appeal, this request was not substantiated, let alone mentioned. Copy-paste can sometimes lead to funny results.
The request for reimbursement of the appeal fee was rightly rejected by the board.
Comments
4 replies on “T 365/24 –Deletion of features and the “essentiality test”-Late filing of a request and not attending OP before the OD”
While the BoA’s displeasure with the late cancellation of the OP can be understood, we must not forget that professional representatives act on instructions from the client.
I can well imagine that the client for its own reasons gave very late instructions to the representative to drop the case (maybe the client lost interest in the case, or realized it was a lost case, or wanted to save money. It is not for us to speculate). What should the representative then have done differently from what (s)he did now?
The BoA doesn’t know why the representative acted like (s)he did, and IMHO had no objective reason to consider this a lack of courtesy.
@ BJ,
I fully agree with you, and I know by experience, that “professional representatives act on instructions from the client”. In the present case, it happens that the client is one of the largest applicant’s at the EPO.
In view of the technical domain of the application, this applicant is often represented before board 3.5.05. I think it is reasonable to assume that this specific client is well aware of the procedure before the EPO.
It is not a small applicant, not really aware of the procedure before the EPO, or in search for money to be represented before a BA. If this had been the case, I would never have mentioned the reaction of the board.
You also seem to have overlooked the fact that the applicant did also not turn up at the OP before the ED. The announcement to the board of appeal is a copy-paste of the announcement to the ED.
During my active life at the EPO, I have met professional representatives, who, without betraying their clients, made clear to the deciding body that that they were fully aware that their action was in accordance with the instructions from the client, and that they had to did what they were told, although they knew that it was in vain.
In the present case, the representative could for instance have said: “we have only recently been ordered not to appear at the OP”. An apology for a late information and the inconvenience caused has never hurt any representative.
The code of conduct of the epi is very clear, and when it comes to courtesy towards the board, it is not interested for this aspect in the relation client-representative, but it is important as a matter of courtesy and should apply.
As far as lack of courtesy is concerned, don’t be mistaken, there are lots of decisions of the boards in this respect.
In the present situation, there was, imho, a clear lack of courtesy, and it was right for the board to note this.
The boards have a very tight schedule in matters of OP,. Any advance information of not appearing is therefore welcome.
If you look up the letter written by the representative, you will see that it is a written confirmation of a phone conversation of earlier that day. We don’t know what was said in that phone conversation, and whether apologies were expressed.
I agree that the representative could have apologized in the letter (and that that would have been better), but then again, perhaps that was done already in the phone call, after which the representative was asked to confirm the cancellation in writing (which he did).
As far as the earlier OP before the ED are concerned: The representative announced more than 2 months (!) in advance that nobody would attend. That can hardly be held against him, IMHO. That was not a late cancellation.
And please note: That was another representative!
I agree with you that the sequence of events fit with a scenario of ‘lack of courtesy’. But other scenario’s are also possible, not even far-fetched.
Therefore I remain of the position that the accusation ‘lack of courtesy’ was lightly made in this case. Too lightly perhaps, but that is a matter of opinion.
@ BJ,
I would like to draw your attention that “the phone conversation of earlier that day” was not with the board, but with the registrar. Even in examination appeal, the rapporteur will never communicate directly with a party.
It might have been a different representative during examination cancelling the OP, but they are both from the same firm. I could agree with you, that it would have been a different representative, if he was from another firm.
In both examination and in appeal, the case was dealt with by the same representative.
The kind of formal letters announcing the absence at OP, i.e. not dealing at all with substance, can be signed by any member of the association/firm. Drawing conclusions and supposing what could have been said, is not a way to argue.
For the rest, you are free to keep your opinion, but it grossly fails to convince.
If you continue at this rate, you will soon be well known at the boards. Whether it is to the benefit to your clients, remains then to be seen.