T 0042/84 (Alumina spinel) 23-03-1987
1. The Guidelines not having the binding authority of a legal text, a failure by the Examining Division to follow them is not to be regarded as a procedural violation within the meaning of Rule 67 of the EPC unless it also constitutes a violation of a rule or principle of procedure governed by an article of the EPC or one of the Implementing Regulations.
2. The failure of the Office to enclose the text of Articles 106 to 108 EPC with the decision neither invalidates the decision nor does it constitute a substantial procedural violation.
Remittal for further prosecution
Added subject-matter (no)
Binding authority of a legal text - Guidelines
Reimbursement of appeal fee (no)
Applicant's request to be informed by telephone disregarded by Examining Division - substantial procedural violation (no)
Failure of the Office to enclose text of Articles 106 to 108 EPC with the decision - substantial procedural violation (no)
I. European patent application No. 80 304 734.9 filed on 29 December 1980 was published under No. 33424.
II. In a first communication the Examining Division raised objection that certain of the alternative processes explicitly claimed in the originally filed Claim 1 were lacking in novelty and the remainder in inventive step, having regard to DE-A-2 119 897 and US-A-4 147 763.
III. In response to this objection the applicant filed a new set of Claims 1 to 13 to replace the original set together with amended pages of description.
IV. In a second communication the Examining Division reported inter alia that the new Claims 2, 4 and 6 contained new subject-matter and were therefore objectionable under Article 123(2) EPC.
V. In a response to this communication the applicant contested the objection, and, maintained the wording of Claims 4 to 13 unaltered but filed new Claims 1 to 3. The Examiner was requested to telephone the applicant's representative should there be any further matters requiring attention.
VI. There was however no further communication between the Examiner and applicant's representative prior to the issue on 11 October 1983 of the decision of the Examining Division to refuse the application. This decision was based on Claims 1 to 3 filed on 11 May 1983 and Claims 4 to 13 filed on 15 September 1982. The ground for refusal was that Claims 4 and 6 involved new subject-matter so that the provisions of Article 123(2) EPC were contravened.
VII. An appeal against the decision was lodged by the applicant on 26 November 1983 and a Statement of Grounds filed on 28 January 1984. The appeal fee was duly paid.
VIII. ... Reimbursement of the appeal fee in accordance with Rule 67 EPC is also requested. ...
4. ... Therefore neither Claim 4 nor Claim 6 of the main request can fairly be regarded as containing new subject-matter and the decision under appeal must be set aside. ...
6. ... The Board considers it appropriate to make use of the powers conferred on it by Article 111 EPC to remit the case to the first instance for further prosecution. ...
8. Regarding the request for reimbursement of the appeal fee, it is observed that according to Rule 67 EPC it is a prerequisite for reimbursement not only that the Board renders a decision in the appellant's favour, but also that such reimbursement is equitable by reason of a substantial procedural violation.
9. The Guidelines, as stated in the General Introduction to them, do not have the binding authority of a legal text. Therefore a failure by the Examining Division to follow them is not to be regarded as a procedural violation within the meaning of Rule 67 unless it also constitutes a violation of a rule or principle of procedure governed by an article of the EPC or one of the Implementing Regulations.
10. It has therefore to be decided in the present case whether the action of the Examiner in disregarding the request made by the applicant's representative in the letter dated 3 May 1983 that he be informed by telephone if there should be any further matters which might require attention, and in failing to communicate with the representative in any other way prior to issue of the decision to refuse was indeed such a violation.
11. The Board is satisfied that the decision is based solely on grounds which were communicated to the applicant in the communication dated 25 January 1983 and therefore on which the applicant had an opportunity to present, and did in fact present, his comments. It also finds that the request in the letter of 5 May 1983 cannot be considered to be a request for oral proceedings made under the provisions of Article 116 EPC. Therefore there was no failure to meet the requirements of Articles 113(1) and 116 EPC.
12. The only other Article of the EPC relating to the examination of the European patent application relevant to the conduct of the Examining Division is Article 96(2), which requires the Examining Division to invite the applicant, in accordance with the Implementing Regulations and as often as necessary to file his observations within a period to be fixed by the Examining Division. In the present case the Division twice communicated with the applicant and invited him to file observations, though the objection on which the refusal was based was, and could only have been, raised in the second communication, since it arose from a voluntary amendment made after issue of the first communication. In the Board's view the issue of a further invitation to file observations was not necessary since both the Division and the applicant had already expressed their opinions on the point at issue, which remained the same. There has therefore also been no violation of Article 96(2) EPC.
13. The alleged failure of the Office to enclose the text of Articles 106 to 108 EPC with the decision neither invalidates the decision nor does it constitute a serious procedural violation. It is clearly stated in Rule 68 that the parties may not invoke the omission of the written communication of the possibility of appeal which has also to draw the attention of the parties to the provisions laid down in Articles 106 to 108, the text of which should be attached, and this must in the Board's view be read as applying also to omission of the text of the articles alone.
For these reasons, it is decided that
Reimbursement of the appeal fee cannot be allowed.