EPLAW PATENT BLOG

EPO – TBA finds a substantial procedural violation because of excessive length of grant proceedings – appeal fee reimbursed

Posted: April 1st, 2016

EPO, T 823/11, TBA 3.5.07, decision of 21 December 2015 – Managing patient care /CAREFUSION

The application was filed in the US as an international application on 15 May 1996 and entered the European phase on 15 December 1997. The supplementary European search report was issued on 18 February 1999. After three communications, the Examining Division refused the application in its decision dated 30 September 2010.

The Board notes that the length of the first instance proceedings was affected by unacceptable delays, in particular the delay of more than five years between the supplementary European search report dated 18 February 1999 and the Examining Division’s first communication of 7 June 2004, and the delay of more than two years between the applicant’s reply of 10 August 2007 to the third communication of the Examining Division and the summons to oral proceedings dispatched on 8 March 2010. These delays were pointed out in letters from the appellant who inter alia repeatedly enquired about the further prosecution of the case.

According to the Board, the delays could not be justified by the particular circumstances of the case. The duration of the first-instance proceedings of more than twelve years after entry into the European phase must be regarded as excessive. The Board considers its conclusion to be in line with the decision of the European Court of Human Rights in the case of Kristiansen and Tyvik v Norway (Application No. 25498/08) concerning delays in patent proceedings in Norway.

In addition, the Board finds fault with the course of the examination procedure and the reasoning in the decision under appeal. The Board observes that the reasoning in the communications was insufficient, confusing and almost unintelligible since they did not clearly identify the closest prior art and the distinguishing features of the invention. None of the communications analysed the individual features of the claim or adequately addressed the arguments of the applicant. Corresponding shortcomings are stated for the decision itself.

Furthermore, the Board finds that the reasons for not admitting the auxiliary request filed in oral proceedings were not properly reasoned. Only at the oral proceedings the appellant heard for the first time a more complete argumentation on inventive step, including a discussion of individual features. The auxiliary request submitted at the oral proceedings was a reaction to this new reasoning and, as stated in the minutes, was considered by the Examining Division to fulfil the requirements of Article 123(2) EPC. Furthermore, it represented a clear improvement over the main request with respect to clarity and restricted the subject-matter of the claim. In the opinion of the Board, given the circumstances of the case, the applicant had the right to have this request admitted. Considering the previous delays, the Board examines this request in substance and acknowledges the presence of an inventive step over the cited prior art.

The Board concludes that the appeal was caused by the substantial procedural violations in first instance proceedings and orders the reimbursement of the appeal fee.
A copy of decision T 823/11 is available here.

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