EP 3 392 719 A1 relates to a process cartridge and an electrophotographic image forming apparatus which uses the same.
Brief outline of the case
The ED refused the application for infringement under Art 76(1) over the parent and the grand-parent application.
It all turned out whether a coupling member, for example an Oldham coupling (in the figure 21-22-23), could be omitted or not.
The board agreed with the ED, that this could not be the case.
AR1=former AR5, was admitted by the board, in spite of representing an amendment to the applicant’s appeal case.
The board remitted to the ED for further prosecution.
In this blog, the topic relates to the admissibility of AR1.
The applicant’s position on the admissibility of AR1
AR1 was filed for the first time with the appellant’s statement of grounds of appeal. It is thus an amendment to the applicant’s appeal case which is to be admitted at the board’s discretion under Art 12(4) RPBA.
The applicant argued that it wished an opinion by the BA on the disputed question of added-subject matter.
Had it filed the AR5 during the examination procedure, it would have received a patent without any possibility to have the question assessed by the BA.
It had filed AR5 at the earliest possible stage of the appeal proceedings, i.e. with the statement setting out the grounds of appeal. Since the added feature corresponded verbatim to the omitted feature and the remaining claimed subject-matter was the same as in the main request, there was no additional burden for the board if it admitted the AR5.
The applicant added that, since it intended to pursue the claimed subject-matter in a further divisional application in case the board would not admit AR5, admitting the AR5 would actually contribute positively to the economy of the procedure, since a new granting procedure relating to such a divisional application would be avoided.
The board’s decision on the admissibility of AR1
The board noted that according to Art 107, it is an undisputed right of the applicant to contest the decision of the ED and seek a judgment on the question of added-subject matter by a BA.
It is evident that in view of the ED’s conclusions, the applicant had no choice but to maintain its MR and to file an appeal if it wanted an opinion of the boards on the same question of added subject-matter.
Regarding the filing of AR5, it is true that there was the procedural possibility to file it during the examination procedure. If the appellant had filed it then and at the same time maintained the MR, it would have still had the possibility to refuse any intention to grant based on AR5 issued by the examining division and receive a refusal which it could then have appealed.
This handling would not have made any essential difference to the board’s task compared to the current procedural situation, since the board would have still been faced with the judicial review of the decision to refuse the MR on the ground of added subject-matter, as well as with the assessment of whether AR5 overcame the reasons for the refusal.
The only difference to the current procedural situation the board saw is that in a hypothetical decision under appeal after the applicant’s refusal of the intention to grant a patent based on AR, an indication by the ED that AR5 met the requirements of the EPC could have been included.
This did not present an additional burden for the board, however, as it intended to remit the case to the ED for further examination.
In addition, the board agreed with the applicant that admitting AR5 request and remitting the case to the ED will allow the case to come to an end in a more efficient way that by obliging the appellant to pursue a further divisional application with the same subject-matter from the start.
The board considered thus that the circumstances of the appeal justify the admittance of AR5 into the proceedings, and decided to admit it under Art 12(4+6)) RPBA.
The board remitted the case for further prosecution
Comments
It is certainly an undisputed right of the applicant to contest the decision of the ED and seek a judgment on the question of added-subject matter by a BA.
However, it is not an undisputed right of the applicant to only file an AR overcoming the objections raised by the ED when entering appeal.
Other applicants/proprietors have seen their application refused for good or their patent revoked for good by not filing an AR overcoming an objection raised during first instance proceedings.
The board merely remitted to the ED, so it did not have any work. Plenty of other applicants/proprietors would have liked in the same situation to see their AR filed upon entry of the appeal procedure to be admitted and the case remitted for further prosecution.
The present decision shows once again that when filing an appeal, procedural decisions of the boards amount to a lottery. In the present case it was to the benefit of the applicant. In the vast majority of the cases, a request filed only when entering appeal is not admitted. Even carry-over requests are not admitted.
As we were in examination, the applicant could indeed have filed a divisional application. For the board it would not have made any difference, but the applicant would have had to pay some fees.
It is a classical move to file a divisional application on the eve of an OP before an ED. As the fees due can be paid within a month, the divisional can be dropped by not paying the fees, should the decision of the ED be positive.
In the present case, the board appears to have confused “economy of the procedure” with “economies for the applicant”.
The applicant is far from being at the edge of bankruptcy if he had to fork out some fees, so the position of the board is difficult to understand and/or defend.
Comments
4 replies on “T 79/21 – Admissibility in appeal of a request overcoming objections raised in first instance”
“It is a classical move to file a divisional application on the eve of an OP before an ED. As the fees due can be paid within a month, the divisional can be dropped by not paying the fees, should the decision of the ED be positive.”
Presumably, this should refer to the TBA rather than ED?
Other than this, I can only agree with you; the applicant was very lucky. As the board observed, they could have filed the auxiliary request at first instance, then they would have received a R.71(3) based on the auxiliary request with reasons explaining why the main request was not allowable. Then, disapproving the text proposed for grant would provide a mechanism to pursue the appeal. The applicant’s arguments on this point were – to say the least – unconvincing.
@ Anonymous
On the filing of a divisional
As far as the filing of a divisional before an OP is concerned, without immediately paying the fees, this can only happen before an OP in examination and certainly not before an OP in appeal. I purposedly referred to the ED rather than to a BA.
Before a OP in examination, the applicant can indeed file a divisional, and drop it later by not paying the fees due.
If an applicant waits to file a divisional shortly before OP in appeal, in the hope of circumventing a negative decision of the board, the possibility of filing a divisional can end rather abruptly. As soon as the BA has taken a decision on the application and made it public during OP, the application is not any longer pending.
However, pendency of a parent application is, according to R 36(1), a necessary, but not sufficient, condition for filing a divisional. Fees are also due.
In T 1184/03, cf. Reasons 3, the applicant requested postponement of the delivery of the decision with a view to file a divisional application. This request was refused. Although taken under EPC 1973, and the then valid RPBA, the reasoning of said board applies mutatis mutandis under the present EPC and the present RPBA.
The only way to avoid such a situation would be to “firmly” file a divisional and pay all the fees dues before the OP in appeal. But then, why wait until the OP to file a divisional. At the latest, the divisional should be firmly filed, i.e. with the fees dues, after the receipt of the communication under Art 15(1) RPBA. By then, the board has given an opinion.
On the present case
In the present case, one wonders why the BA played the game of the applicant. There is no justification whatsoever.
Other applicants can refer to the present decision, but I doubt they will receive such an attentive ear, as with the present board.
As you explain correctly disagreeing with the text proposed under R 71(3), would have been the correct way to proceed.
The present board seems to have a very strange notion of what “procedural economy” means. And for third parties, the uncertainty is prolonged.
The present decision should remain a one-off.
My confusion stems from the fact that in examination, a decision to refuse only ends proceedings when the written decision is notified to the applicant and a divisional can even be filed within the period for appealing the written decision. I have never come across anyone filing a precautionary divisional application before examining division oral proceedings or even during them, because there is no need. My experience of working is firms is this approach would create internal administrative problems because you need to monitor deadlines and write off standard charges for filing a divisional application that the applicant might never have wanted.
I agree that the opportunity to file a divisional is limited during oral proceedings and the client’s rights need to be carefully protected before the oral proceedings start. In appeals, it is my standard practice (and standard practice of my firm) to file a no-fee divisional the day before the oral proceedings to avoid having to rush to file the divisional application during the actual oral proceedings. I prefer to file the divisional close to the oral proceedings to ensure that there js plenty of time to consider the decisions taken by the board, since the conduct of the oral proceedings can provide a lot of information about whether there is even any point in filing a divisional application.
@ Anonymous,
There might not be, as you noticed, a stringent need to file a divisional application before an OP in examination, since a divisional can be filed up to the end of the period for filing an appeal, cf. G 1/09. I know however that it is practiced. Only the EPO could give figures about divisional applications which are later dropped for non payment of fees.
The idea is, in general, to obtain with a divisional a broader scope of protection, but first obtain a patent with possibly a narrower scope of protection.
In case of a negative decision of the ED, it is, as you also correctly say, as well possible to file a divisional before the OP in appeal.
Filing a divisional, whether in examination or in appeal, is linked with some costs. As IP budgets are not extensible at will, filing a divisional has often to be well thought trough.
However, filing a divisional can also leave third parties in limbo, as they will not know until the last divisional has been decided upon what the claims actually cover.
This is why the EPO introduced for a while a time limit in R 36 for filing divisional applications. The idea was avoiding cascading of divisional applications, for exactly this reason. The rule and its interpretation, were however so confusing and complicated, that it has been rescinded. The new rule with a fee for every further generation of divisional, is however no real deterrent for cascading divisional applications, when there is a will to do so.
I know personally of one case in which after 17 years from filing a divisional application was still pending. As there was a lot of money at stake, it was clear that the chances for having a broad patent had to be kept simmering as long as possible.
Wen looking at board’s decisions following divisional applications, the corresponding patents are frequently revoked for lack of compliance with Art 76(1), as they attempt to cover combinations which are not directly and unambiguously derivable from the parent application. As divisional applications can be filed as long as an application is pending, it also possible to see how the market reacts and try to come as close of possible to competitors.