A recent decision from the EPO Boards of Appeal, T 105/11, illustrates a couple of points that should serve as a warning to both patent attorneys and EPO examining divisions.
European patent application 05771127.7, in the name of LG Electronics Inc., reached the end of the line as far as the examining division (ED) was concerned, with oral proceedings held on 30 June 2010. The outcome was that the application was refused for lack of inventive step. The ED issued their decision on 29 July 2010, supported by their grounds for the decision. The applicant's attorney wrote back the next month to indicate an error in the decision, noting that the grounds made reference to an auxiliary request that did not exist. The ED then issued what appeared to be a replacement decision on 6 September 2010, with the grounds amended to correct the error. At this point, the question that might immediately come to mind (at least with the benefit of hindsight) is: what was the correct date to take into account for calculating the periods for filing a notice of appeal and the supporting grounds of appeal? Was it the original date of 29 July 2010 or the later date of 6 September 2010 for the corrected version? The patent attorney responsible for the appeal apparently thought it was the latter. Although a notice of appeal was filed on 23 September 2010, which was in due time for both of the dates, the grounds of appeal were not filed until 7 January 2011, which could only be in time for the later date. The EPO initially processed the appeal to indicate that the notice, fee and grounds had been filed in due time, presumably taking the second date as the one to work from. The Board of Appeal, however, took a different view, at least initially. One they got round to finally looking at the case, in a preliminary opinion issued on 27 November 2015 the Board indicated that the ED did not have the power to withdraw a decision and take a new decision, meaning that the second issued decision could not take the place of the first, but could only correct it retrospectively. The appeal therefore appeared to be inadmissible because the statement of grounds was filed late.
In the subsequent appeal decision, the Board cited various decisions (T 1176/00, T 1081/02, T 830/03, T 993/06 and T 130/07) where a second decision had been issued incorrectly and had been relied on the the detriment of the parties. In each case the Board had decided that the appeal should be found admissible in view of the principle of the protection of legitimate expectations, given that the parties had in each case been misled into thinking that the date of the decision was different from what it actually was. The Board distinguished this case over the previous cases though, because the appellant had explicitly requested that the written decision be corrected. In the Board's view, "the professionally represented appellant should have been aware that the second decision intended to correct as requested by the appellant itself, the first written decision under Rule 140 EPC" (point 1.8 of the reasons). In other words, the attorney should have known that the second decision was not a replacement decision and did not change the original date. Although it could be argued that the apparent confusion was the result of a legal misunderstanding, it was clear that the second decision was not issued correctly and it was this that the appellant had relied on to count the periods for filing the notice and grounds of appeal. The Board then decided that the grounds were deemed to have been filed in time, although "not entirely without hesitation" (point 1.10).
The reason for the Board deciding in favour of the appellant probably also had something to do with the ED being responsible not only for an incorrectly issued decision but also for a number of errors in the decision itself. Firstly, the ED referred to claims that had been filed on 30 July 2009. The applicant had, however, filed different claims on 25 May 2010 before the oral proceedings. The ED's decision was therefore based on claims that were no longer approved by the applicant. The ED also did not annex a copy of the claims to the decision, as advised in the Guidelines for Examination (E-IX, 5). The ED also did not follow the problem-solution approach in their reasons for finding the application to lack inventive step, contrary to the Guidelines (G-VII, 5), making the decision being insufficiently reasoned in violation of Rule 111(2) EPC. The decision was also, the Board's view, unconvincing in other respects, in particular where they had indicated doubt as to whether the technical problem argued by the applicant actually existed. As the Board noted, it is irrelevant whether or not a problem actually exists in the prior art, as the problem is defined as one given to the skilled person as part of the problem-solution approach. Given the numerous flaws in the ED's reasoning, the Board decided to remit the application to the ED and reimbursed the appeal fee.
Other than spotting that the apparently reissued decision was not the one to be relied on, it is not clear to me what the appellant could have done differently in this case, given the catalogue of errors on the part of the examining division. It looks like this is just one of those cases that will have been very frustrating for the applicant, and one that will probably not be settled for a while yet. Let's hope that the examining division have learned some lessons and do better next time.
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