CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 928/19 – New PA introduced by the board - Remittal for further search

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The application relates to load distribution in distributed database systems.

Brief outline of the case

The sole request underlying the decision under appeal was refused for

(a) lack of compliance with Art 123(2),

(b) lack of compliance with Art 84, clarity and conciseness, the latter in conjunction with R 43(2)(a), and

(c) lack of compliance with Art 56 in view of D1=US 2005/114862 A1.

In a communication under Art 15(1) RPBA, the board provided its provisional opinion that

(a) the requests were compliant with Art 123(2),

(b) both requests were not compliant with Art 84 for lack of essential features,

(c) the main request was not compliant with R 43(2)(a), and further lacked clarity as it defined the scope of protection by reference to non-claimed entities,

(d) they lacked inventive step in view of D1, also with reference to the following document, which was introduced by the Board:

DA1: Kieran McCorry, “Understanding Front-End Servers”,, 19.10.2003.

The board cancelled the OP and informed the applicant that it intended to remit the case for further prosecution.

The board’s decision

The new MR amended the previous first auxiliary request so as to overcome the board’s objections in its preliminary opinion. The objections of lack of clarity and added subject-matter were not any longer relevant.

Considering these circumstances, the board admitted this request under Art 13 RPBA.

The board held that the ED erred in its analysis of D1 and did not see that the skilled person would arrive at the claimed invention by solving the problem of routing work to the active servers of D1.

The board acknowledged that the skilled person starting from D1, in order to arrive at the claimed invention in the manner considered would have to make a few crucial decisions.

The board came to the conclusion that the skilled person could have arrived at the invention, but that it cannot be asserted that he or she would have, therefore found the claimed invention not to be obvious when starting from D1.

The board noted that D1, relied upon by the ED, is a document mainly directed to a localised load redistribution, which is conceptually the opposite of the claimed Invention.

Also, and perhaps more importantly, although front-end/back-end server architectures were well known in the art at the filing date of the application, whereas the decision of the ED does not refer to any such document. More relevant prior art may therefore exist.

The board thus decided to remit the case to the ED for further prosecution, possibly including an additional search.


The application was filed on 17.12.2007. The search report was issued on 08.05.2008. The first communication of the ED was issued on 12.01.2010.  The second communication was issued on 04.02.2016. The applicant was summoned to OP on 15.02.2018 for the 15.10.2018.

The applicant did not turn up at the OP. This is not a surprise in view of the decision of the board with respect to D1.

D1 was the first of 3 documents of category X mentioned in the ESR.

It is rare that a board cites new PA, but in this case it appeared necessary. The board clearly doubted the quality of the original search.

At the end of the year, the application will have been in limbo for 17 years. Should an opposition come, the active life of the patent will most probably have come to an end when a final decision in opposition is given.

The board was decent in its formulation, but actually strongly suggested to carry out a further search.  

Leaving a file idle for 6 years and waiting two years to summon to OP is not acceptable. This is the more so, since the  board suggested to carry out a further search as the original one seems to have missed the point. The EPO’s EDP system allows to spot such submarine files. Why did it fail here?

It would not come as a surprise should the ED simply grant a patent on the basis of the claim held patentable by the board, with a mention of D1A as CPA in the description.

I have great sympathy for examiners in view of the ever increasing production pressure, but such a case cannot be considered normal.


4 replies on “T 928/19 – New PA introduced by the board – Remittal for further search”

“The EPO’s EDP system allows to spot such submarine files.” (or cupboard files). Well, did the software fail, or did some human person click away the warning? And if a human was involved, can the Examiner do so on his/her own, or has a team manager clicked way the warning, or even a director?

Avatar photoDaniel X. Thomassays:


I am not in a position to give a direct answer to your question. The software did most probably not fail. I can only say that in my active time as director, I got a monthly list of “submarine” files. It was thus easy to instruct examiners to deal with such files.

Submarine files are in general difficult files, but in my experience, they do not get easier by leaving them to sleep.
In view of the decision of the board, I guess that the present file was a difficult one.

In the recent to medium past, and in order to reach the production targets set by the upper management, instructions have been given to examiners to prioritise “easy” files. This might also be an explanation.

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