T 0300/89 (Polyesters) of 11.4.1990

Summary of Facts and Submissions

I. The European patent application No. 85 308 381.4 filed on 18 November 1985, claiming priority of 21 November 1984 from an earlier application US 673 870 and published under the publication number 182 642, was rejected by a decision of the Examining Division dated 28 November 1988. This decision was based on a set of 14 claims filed on 5 September 1988, ...

II. The only ground for this decision was non-compliance with the requirements of Article 54 EPC with regard to the teaching of the following document (1) US-A-3 256 226. ... Although the application was acknowledged to contain patentable matter in other claims, the refusal thereof after one communication only was regarded as justified, since the Applicant's argumentation in the reply filed on 5 September 1988 contradicted both the basic chemical principles and the content of the description of the application. Furthermore, further prosecution of the examination would not be compatible with the thorough, efficient and expeditious substantive procedure aimed at by the EPO.

III. A notice of appeal was lodged against this decision on 19 January 1989 with payment of the prescribed fee. Together with the Statement of Grounds of Appeal filed on 29 March 1989 the Appellant (applicant) submitted two additional sets of claims B and C to be considered as auxiliary requests besides the original set of claims A maintained with the exception of two minor editorial amendments in Claim 1 as main request. The scope of the claims of set B is substantially the same as the scope of the claims of set A; as far as Claim 1 is concerned, the ethylenically unsaturated polyester is defined at the end of the claim as "having an ethylenic unsaturation equivalent weight of less than 330". In Claim 1 of set C the polyester is further defined as "incorporating pendant side chains which have polymerisable ethylenic unsaturation and are derived from said polymerisable ethylenically unsaturated compound".

IV. The arguments presented by the Appellant in his Statement of Grounds can be summarised as follows. ... From a procedural point of view it was submitted that the refusal of the application in suit, which was acknowledged by the Examining Division to contain allowable claims, after only one communication, is a substantial violation of procedure, all the more as the Examining Division failed to telephone the applicant's representative as requested in the reply to this communication. The aim of the EPO to carry out a "thorough, efficient and expeditious" substantive examination could hardly be served by arbitrary refusal of an application in such circumstances. The refusal to continue the examination at such an early stage, and in a manner calculated to circumvent the Appellant's right to request oral proceedings, had not allowed a thorough investigation of the issues. The Examining Division had a joint responsibility to co-operate with applicants in overcoming linguistic and other misunderstandings as to the true scope of the claims.

V. The Appellant requested that the impugned decision be set aside, and that a patent be granted according to the set of claims A as main request, the set of claims B as first auxiliary request or the set of claims C as second auxiliary request, as well as the reimbursement of the appeal fee.

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is, therefore, admissible. Main request and first auxiliary request ...

5.5 In conclusion, in view of the above arguments, the subject- matter of Claim 1 of each of these requests cannot be regarded as novel over the prior art teaching. Second auxiliary request By contrast, examination of the second auxiliary request leads to a different result. ... For these reasons, the additional presence of unsaturated side chains in the polyester has to be regarded as a structural feature which confers novelty on the claimed subject-matter.

8. Since the only ground for refusal - lack of novelty of the subject-matter of Claim 1 - is no longer valid for Claim 1 of set C, the decision under appeal must be set aside. Nevertheless, since the set of claims C constituting the second auxiliary request was not submitted before the Examining Division, the appeal is not allowable. Furthermore, the patent sought cannot be granted since the substantive examination has not yet been completed. The Board, therefore, makes use of its power under Article 111(1) EPC to remit the case to the Examining Division for further prosecution.

9. Procedural matters 9.1 Since the appeal is not allowable, the appeal fee cannot be reimbursed under Rule 67 EPC as requested by the Appellant. Nevertheless, the submissions made by the Appellant concerning the alleged substantial procedural violations made by the Examining Division during the examination procedure under Article 96(2) EPC (see paragraph IV above) deserve consideration by the Board, since if such submissions were correct, it would be desirable for the Board to support the Appellant in this respect, in order that the Examining Division should consider modifying its procedure in future cases. The procedure under Article 96(2) EPC requires that any communication from the Examining Division thereunder "shall contain a reasoned statement covering, where appropriate, all the grounds against the grant" of the patent (Rule 51(3) EPC). Furthermore, the Examining Division shall invite the applicant "as often as necessary" to file observations in reply (Article 96(2) EPC and "where necessary, to file the description claims and drawings in amended form" (Rule 51(2) EPC). Thus the Examining Division has a discretion either to invite observations and amendments in reply, which should be done when necessary, or (after its first communication has been issued) to issue a decision rejecting the application. The manner in which such discretion should be exercised was considered in Decision T 84/82 (OJ EPO 1983, 451). In paragraph 7 it is stated:

"7. If the Applicant fails to make any real progress towards the refutation of the presumption of invalidity properly established in the first communication by the Examining Division, or no such progress appears to be possible even with amendments on the face of information available, it is within the discretion of the Examining Division, according to Article 96(2) EPC, to interpret the submissions on behalf of the Applicant as complete and final, and to assume, in consequence, that no useful purpose would be served by the provision of further opportunities for filing observations, and to reject the application in the second communication, when this is justified by the above circumstances. It is the declared aim of the European Patent Office to carry out the substantive examination thoroughly, efficiently and expeditiously, but this requires also a proper collaboration from the Applicants, and good faith. The necessity for filing further observations prevails as long as progress towards grant can be envisaged in the light of submissions made." While this Board generally supports what is there set out, some qualification is appropriate. As is stated in the Guidelines for Examination, C-VI, 2.5, with which the Board agrees, "The examiner should be guided at the re-examination stage by the overriding principle that a final position (grant or refusal) should be reached in as few actions as possible, and he should control the procedure with this always in mind." Thus in the Board's view, even if it is possible for the Examiner to envisage amendments which might enable progress towards grant, the burden lies upon an Applicant (if he so wishes) to propose amendments (including by way of auxiliary requests) which overcome the objections raised by the Examining Division, in his observations in reply to the first communication in which such objections are raised. In the present case, the objection of lack of novelty of Claim 1 was clearly raised and explained in the first communication under Article 96(2) EPC. If the Appellant wished to minimise the risk of an immediate adverse decision and consequent necessity of an appeal, it was clearly appropriate for him to have filed auxiliary requests (such as were filed in this appeal) before the Examining Division. The Examining Division would then have been obliged to consider the allowability of each auxiliary request so filed, in the same way as the Board of Appeal has in this appeal.

9.2 In relation to the suggestion that the Appellant's right to request oral proceedings had been circumvented by the course taken by the Examining Division in the present case, the Board comments as follows:

As was stated in Decision T 299/86 dated 23 September 1987 (Headnote published in OJ EPO 1988, 88), "the right of a party to have oral proceedings is dependent upon such party filing a request for such proceedings: in the absence of such a request, a party has no right to such proceedings, and the EPO can issue a decision, whether adverse or not, without appointing such proceedings" (paragraph 2). Furthermore, "unless and until (the party) has actually filed such a request, he runs the risk that an adverse decision may be issued without the appointment of such proceedings, if it is otherwise appropriate to do so. A request for oral proceedings may be withdrawn at any time, so if there is a possibility that oral proceedings will be required, it is clearly safer from a party's point of view to make such a request at an early stage. Withdrawal of a request should clearly be made as early as possible and well in advance of the appointed day" (paragraph 5). Thus in the present case, if the Appellant had in mind to request oral proceedings before the Examining Division, he should have filed a request for such proceedings at the latest with his observations in reply to the (first) communication from the Examining Division, if he wished to avoid the risk of an adverse decision being issued without the appointment of such oral proceedings.

9.3 Finally, in relation to the Appellant's complaint as to the failure of the Examiner to telephone as requested, the practice in relation to such informal communications is clearly set out in the Guidelines, paragraphs C-VI, 4.4 and 6. Such informal communications and the practice relating to them should be clearly distinguished from the formal examination procedure governed by Article 96(2) and Rule 51 EPC. The Examiner's discretion as to whether to make such an informal communication must be exercised in accordance with the Guidelines having regard to the particular circumstances of each individual case. An exercise of such discretion adversely to an applicant, such as in the present case, cannot by its nature be a procedural violation, however, because the procedure for such conversations is informal in the sense that it is not governed by the EPC, but is additional to the procedure provided by the EPC. In any event, in the Board's view, in the present case no criticism can properly be made of the Examiner in relation to his failing to telephone the Appellant.

9.4 For the above reasons, in the Board's view the procedure before the Examining Division did not violate Article 113(1) EPC, and did not involve any procedural violation which could justify refund of the appeal fee.

ORDER

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The main request and the first auxiliary request are rejected.

3. The case is remitted to the Examining Division for further prosecution on the basis of Claim 1 of set C - the second auxiliary request - filed on 29 March 1989.

4. The request for reimbursement of the appeal fee is rejected.