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T 762/20 – Two Substantial Procedural Violations and no reimbursement of the appeal fee?

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The application relates to methods and systems for performing file transfers across different domains between virtual machines when at least one of these machines is untrusted.

Brief outline of the case

The ED decided, among other things, that the subject-matter of independent claims 1 and 8 of the MR and of AR1 lacked IS over the prior art disclosed in document D5 and that claim 1 of the MR did not comply with Art 84. The ED did not admit AR2 into the proceedings.

During prosecution, there was a telephone conversation between the examiner in charge and the representative of the applicant.

The OD decided to refuse the application at the end of an OP held in the absence of the applicant.

The applicant appealed the decision of the OD refusing the application.

The board decided that the ED had committed two substantial procedural violations (SPV).

The file was thus remitted to the ED for further prosecution.

The board did however refuse the reimbursement of the appeal fee.

This is the interesting part of the case.

The telephone conversation

During said telephone conversation, the ED raised a further objection under Art 84 in that the term “modified” was not clear. The ED submitted that, in the MR, there is no clue for the skilled reader about how the data has been modified, by whom or what, and what technical features should be considered behind the term ‘modified‘.

Even the description of the application remained largely silent about the modification and the ED only found 2 passages which provide some support of the feature, i.e. paragraphs [0069] and [0074], in which it can be understood that ‘modified‘ is intended in the context of a hotfix or system update and the files therein are then made available to a guest domain.

However, this interpretation is not exclusive by only the wording of the claims, and the broader interpretation is applicable without an amendment that encompasses the disclosed definition of the modification in paragraphs paragraphs [0069] and/or [0074]. Therefore, without such amendment, the examining division upheld its interpretation of ‘modified data’ and the consequential Art 56 objection, starting with document D4 in combination with common knowledge, as raised in the summons.

The same objection was also raised against AR1 which was clearer, but not as far as being supported by the hot fix or system update as reflected in paragraphs [0067] (?) and/or [0074]..

The applicant’s point of view

The applicant argued, inter alia, that no substantiated objections based on D5 had been raised in an official communication from the EPO before the decision under appeal, in which the newly cited document, D5, was used as the closest prior art for refusing the application.

The applicant also argued that document D5 could have been communicated to the applicant at an earlier stage of the proceedings. It had been inappropriate for the ED not to admit AR2, which had been filed as soon as possible in response to the new document, D5, sent via an informal email.

The first SPV

The board noted that, according to the minutes of the telephone conversation, the ED not only did not raise any objection for lack of support, but even made statements which appeared to recognise some support in paragraphs [0069] and [0074] of the description for the feature “modified data” in the context of claim 1. Even though the objections against the feature “modified data” were not caused by the amendments filed in response to the summons to OP before the ED, in the annex to the summons the ED did not raise any objection under Art 84, and in particular did not raise any objection for lack of support.

The ED substantially changed its view regarding the lack of support by the description for the subject-matter of claim 1 when it finally decided the case. This must have come as a surprise to the applicant, which was not informed of the objection for lack of support in the description before the ED made its decision.

In addition, the reasoning for lack of support in the decision under appeal is insufficient since it does not explain why paragraphs [0069] and [0074] of the description did not provide the support needed, even though they were previously mentioned as providing some support. The board held that “Consequently, the board considers that the applicant’s right to be heard under Art 113(1) was violated, which is a SPV and thus a special reason for remittal under Article 11 RPBA20”.

The second SPV

In the decision under appeal, the ED used document D5 as a starting point in its reasoning on the ground for refusal of lack of IS. The ED claims to have send an email in which an IS objection was based on document D5. However, the electronic file, the only reference available, does not contain the email sent to the applicant.

The board thus agreed with the applicant that the latter was not officially informed of an IS objection based on document D5 by the EPO before the notification of the contested decision.

The board refrained from taking a decision on IS and remitted the file to the ED.

The board’s refusal to reimburse the appeal fee

The board admitted that in the present case the ED committed two SPVs and there were thus two reasons for remitting the current case to the department of first instance under Art 11 RPBA20.

What is however surprising is that the request for reimbursement of the appeal fee was refused.

The reason given by the board is that “the ED’s objection that claim 1 of the main request considered in the contested decision was unclear was not tainted by a SPV. Consequently, the applicant had to file an appeal against the decision on the refused main request in view of this objection for lack of clarity anyway. The fact that the ED’s clarity objection is not convincing does not change the situation regarding the reimbursement”. In point 6 of the Reasons, the board negated what it had said in Point 3.4.2 of the reasons. The board referred to T 2377/09, point 4 of the Reasons.


Lack of clarity vs. lack of IS

It appears rather difficult on the one hand to consider that a claim lacks clarity, but at the same time that it lacks IS. I would think that, in principle, a lack of clarity precludes any decision on IS. If it is possible to assess IS, the claim must have been clear.

It can be possible to combine both objections, but this is only possible to do so when an ED gives a certain interpretation of unclear features, and on the basis of the interpretation decides upon a lack of IS. This can save time in examination, but does not change the fundamental contradiction between lack of clarity and lack of IS (or lack of N).

This however only possible on the basis of documents communicated officially to an applicant.

The refusal to reimburse the appeal fee

The ED might have committed two SPVs, but the board was not coherent when it dealt with the reimbursement of the appeal fee.

In Point 3.4.2 of the reasons, the board acknowledged that the objection of lack of clarity came as a surprise to the applicant and that it was not properly substantiated.

In Point 6 of the reasons, the board alleged that the ED’s objection that claim 1 of the MR considered in the contested decision was unclear and was not tainted by a SPV. If an objection comes as a surprise and is not properly substantiated, it necessarily means that the division of first instance committed a SPV.

Therefore, those two parts of the decision are in clear contradiction.

In T 2377/09, the board based the refusal of the reimbursement of the appeal fee as there were additional, alternative grounds which did not give raise to an SPV and against which the appellant should in any event have appealed in order to obtain a reversal of the decision.

It is difficult to see that in the present case, in how far there were further reasons which would have led the applicant to inevitably have to file an appeal.


Art 111 / R103(1a)

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2 replies on “T 762/20 – Two Substantial Procedural Violations and no reimbursement of the appeal fee?”

Bring aboutsays:

The way I understand the board’s position (not saying that I agree):

The board sees 2 objections under Art. 84 in the refusal: (1) The claims are not clear (2) The claims are not supported.
For (1), the objection is more or less the same in the telephone minutes and in the ED’s decision to refuse. The right to be heard has been respected. The board disagrees with this objection, but there was no SPV.
For (2) the right to be heard was not respected, first SPV.

(1) having been substantiated without SPV, the applicant would have had to file an appeal to overcome it, similar to T2377/09.

Avatar photoDaniel X. Thomassays:

Dear Bring about,

I agree with your comment.

Whilst it can be understood that board was not convinced by the ED’s objection of lack of clarity, I still consider that the board could have been more generous.

In presence of two SPV, coming up with the necessity of in any case filing an appeal is somehow misplaced.

As the objection of lack of clarity was actually mixed with the objection of lack of IS which was clearly tainted by a manifest procedural violation, the distinction made by the board is extremely formalistic and can be queried.

It is fully understandable when the boards refuse simultaneous interpretation just for the convenience of a party and people linked with it. In the present case, the board showed a very narrow vision of the situation.

To do justice is not simply to state the law, but also to assert fairness.

Is the EPO so poor that the board has to take care of the finances of the EPO by not reimbursing the appeal fee in case of two SPV by adopting a very formalistic approach?

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