CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 949/19 - An OD cannot cherry-pick objections in its written decision

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The patent relates to methods for processing analyte sensor data for sensor calibration.

Brief outline of the file

The patent was revoked as none of the requests on file were novel over the prior art brought forward by the opponents.

The board decided to set aside the decision of the OD, as for the board claim 1 of AR2 was not lacking N, and remitted the case for further prosecution.

The board queried the decision of the OD as it appeared from the minutes that other topics than N were discussed during the OP.

The board’s decision

During the opposition proceedings, both opponents raised further objections as to a lack of N, added subject-matter, insufficiency of disclosure and a lack IS, none of which had been considered in the decision of the OD.

In respect of these issues, including those that were discussed at the OP such as added subject-matter and sufficiency of disclosure, there is no decision to be reviewed.

It is true that during the OP the OD considered objections of added subject-matter and sufficiency of disclosure against the main request, coming to the conclusion that none of these objections, which would also have applied to the auxiliary requests, was convincing.

However, neither these findings nor the reasons underlying them are present in the decision under appeal.

In view of the primary object of the appeal proceedings being to review the decision under appeal in a judicial manner, cf. Article 12(2) RPBA, the board was therefore of the opinion that the absence of reasoning regarding these other objections represents a special reason within the meaning of Art 11 RPBA for remitting the case to the opposition division for further prosecution under Art 111(1).

The board added that in a last-instance decision, when a request is not allowed on other grounds it is normally superfluous to address further objections raised against that same request that were found unconvincing after having been discussed at OP.

For the board, the situation is different for a decision of an OD, which may be the subject of an appeal.

In the present case, if the board is not convinced by the reasons the OD gave in support of precluding the maintenance of the patent on the basis of a certain request, the lack of a decision to review in respect of the further objections may result in a remittal for the consideration of said further objections, resulting in a delay in the proceedings.


Duty of an OD

An OD cannot cherry-pick objections and only discuss in its written decision those which lead to the final decision of revocation of the patent.  

An OD has to deal with all objections raised by the opponent(s) and cannot ignore them in its written decision and merely mention them in the minutes.

The minutes indeed mention discussions for the MR on objections of lack of N over D11, added matter [Art 76(1)+123(2)], lack of sufficiency,  which were found not persuasive by the OD.

The board has quite rightly drawn criticism against the OD.

Such a decision should not have been issued.

Here again, the first member issued a decision which was not properly checked by the second member, the minute driver. The overall check by the chair of the OD was clearly deficient. The divergence between the minutes and the written decision are manifest and should not have escaped his attention.

The fact that nowadays ODs barely meet did certainly contribute to this situation.

On the procedure

Claim 1 as granted lacked N over D9=WO 00/49941 which was the first X (out of three) cited on the ESR.

The OD decided that AR1 and AR2 lacked N over D1=US 2002/0043651, not mentioned on the ESR.

The OD interrupted itself from 15.10 to 16.44 to discuss the N of AR1. The discussion within the OD must have been quite intense.

The discussion on AR2 was much shorter and only lasted from 17.30 to 17.53, when the OP was closed with the announcement of the revocation. But this decision was, according to the board, not correct.

The examination procedure was suboptimal as the patent should never have been granted as the N destroying document was mentioned on the ESR.

The same can be said of also the opposition procedure. Time pressure does not dispense an OD to deal with all objections raised by the opponent(s).  And yet, there are presently specialised directorates in opposition.

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