Key points
- The applicant requests a decision according to the state of the file, the applicant gets a decision according to the state of the file. Even though that sometimes seems the view of the EPO, the Board sees a substantial procedural violation in this case- correct in my view.
- " In response to the summons to oral proceedings, by letter dated 23 March 2018 the applicant filed amended claims 1 to 4 according to a new main request and new auxiliary requests 1 and 2, which replaced the requests then on file. "
- " On 16 April 2018, the first examiner and the applicant's representative held a consultation by telephone."
- " By letter dated 19 April 2018, the applicant withdrew its request for oral proceedings and requested a "Written Decision on the basis of the prosecution history as it currently stands"."
- " By a further communication dated 23 April 2018, a copy of the result of the telephone consultation with the date "16.04.2018" was sent to the applicant. The examiner had expressed the opinion that the subject-matter of claim 1 of the main request and of auxiliary requests 1 and 2, filed by letter dated 23 March 2018, did not meet the requirements of Article 123(2) EPC and that the subject-matter of claim 1 of the main request did not involve an inventive step under Article 56 EPC in view of document D7."
- The refusal decision consisted of Form 2061 merely referring to the "result of the phone consultation" of 23.04.2018.
- The Board: " communications referred to in a decision "according to the state of the file" on EPO Form 2061 must contain a fully reasoned exposition of the examining division's objections to the current application text and refutation of any rebuttal by the applicant (see for instance T 583/04"
- " the use of standard Form 2061 is only appropriate where the examining division has fully expressed and reasoned its objections to the current requests in one or more preceding communications, taking into account all the arguments put forward by the applicant and doing so in a manner which does not leave it to the board and the appellant to speculate as to which of the reasons given in preceding communications might be essential to the decision to refuse the application"
- " the examining division issued the communication of 23 April 2018 with the copy of the result of the telephone consultation without inviting the applicant to file its observations, and on 26 April 2018, i.e. only three days later, it issued the contested decision according to the state of the file. It follows that the decision under appeal in the case in hand is based on grounds on which the applicant had no opportunity to comment. The applicant's right to be heard enshrined in Article 113(1) EPC has therefore been infringed. "
- The decision under appeal is set aside, the case is remitted, and the appeal fee is reimbursed.
- As a comment, the Examining Division could have held the oral proceedings. Even if the applicant would have stayed away, the Examining Division could likely have refused the application after consideration of the amended claims ( G4/92 has no bearing on ex parte proceedings).
T 2378/18 -
Reasons for the Decision
1. The appeal is admissible.
2. Even though the appellant has not challenged the examining division's decision on the grounds of a substantial procedural violation, the board is entitled to examine whether or not any such violation occurred during the examination proceedings (see for instance decision T 405/12, point 3 of the Reasons).
source http://justpatentlaw.blogspot.com/2021/12/t-237818-decision-according-to-state-of.html
