Fundamental deficiencies in an Examining Division’s inventive-step reasoning are not substantial procedural violation

•        Remittal - fundamental deficiency in first-instance proceedings (yes)

The Appellant’s arguments

In view of the Appellant, the Board’s communication stating that the ED’s inventive step reasoning showed “fundamental deficiencies” would be analog to Rule 103(1)(a) EPC for full reimbursement by reason of a substantial procedural violation (“The appeal fee shall be reimbursed in full in the event of interlocutory revision or where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reasons of a substantial procedural violation") and Rule 103(6), second sentence, EPC (“[…] In all other cases, matters of reimbursement shall be decided by the Board of Appeal”). In particular, the grant proceedings would have already taken almost nine years and the Appellant would have had to invest a lot of time and effort to arrive “at the current stage”.

The Decision of the Board

The Board noted that neither with the notice of appeal nor with the grounds of appeal the Appellant had argued that there had been a substantial procedural violation. In its communication under Art. 15(1) RPBA, the Board identified fundamental deficiencies in the use of D1 as the starting point for the assessment of inventive step, but did not conclude that there had been a substantial procedural violation. The Appellant did also not provide further substantiation on why it would be equitable to reimburse the appeal fee under Rule 103(1)(a) EPC.

The Appellant would have argued in the statement of grounds that the ED substantiated neither why it considered feature F1 in the impugned decision to be part of the common general knowledge nor which circumstances would have led the skilled person to select this feature. The Appellant cited the following decisions: T 1641/11, Reasons 3.6; T 475/88; T 939/92, Reasons 2.3 and 4.2; and T 1541/10, Reasons 7.4. The ED would have stated in point 11.2 of the decision after appeal, after having identified feature F1 as the only distinguishing feature, that “it [was] a mere choice for the person skilled in the art to select a common attribute value of interest which would be done in accordance with the circumstances and without any special technical effect”. The ED then concluded in point 11.3 that the claimed method was not inventive.

The Board noted that according to the ED, the feature F1 would merely refer to a subset of desired data to be used to create a further query. The ED would have concluded that no documentary proof was required for a skilled person being able to select desired data from available data for a further query. The Board interpreted the ED’s argument, including the statement that there was no “special technical effect”, to have been that the sole distinguishing feature F1 was not technical. In the Board’s opinion, the term “special technical effect” would be ambiguous in this context, and it did not agree that F1 was the sole distinguishing feature nor that feature F1 would have no technical effect in the context of the claimed method.  

However, the Board considered the deficiencies in the ED’s arguments to constitute a matter of inappropriate drafting and wrong judgement rather than a substantial procedural violation within the meaning of Rule 103(1)(a) EPC. The same would apply to the issues with regard to the inventive-step reasoning based on D1: even though the Board disagrees with the reasoning of the decision under appeal, it did not consider that its deficiencies amount to a substantial procedural violation.

Regarding the length of the procedure, the Appellant had not reasoned why any of the delays justified reimbursement under Rule 103(1)(a) EPC. The Board, having assessed the file history, was of the opinion that none of the steps in the proceedings would have been unreasonably long. The ED would have taken each step in a timely manner and would not have taken unnecessary steps, and the Board did not see any procedural steps that would have been unduly delayed by the ED.

In conclusion, the Board saw no reasons to grant the request for full reimbursement based on Rule 103(1)(a) EPC and confirmed that the Applicant was entitled to partial reimbursement on the basis of Rule 103(4)(c) EPC should the oral proceedings not take place. The Applicant stated that there was no need to have oral proceedings to further discuss the question of full reimbursement.