Mr van Staveren Strikes Again

The IPKat reported last June on a rather strange case in which an EPO examining division had refused an application on the grounds that prior art known to the inventor was not mentioned in the specification as-filed, contrary to Rule 42(1)(b) EPC. The applicant appealed this decision and had it quickly overturned in T 2321/08, without even the need for a hearing. The examiner then reluctantly agreed that he was bound by the decision (with certain caveats, which the prosecution file, available here, makes clear), and carried on with prosecution. The IPKat thought the matter would be laid to rest there, but he was wrong.

In a further decision from last month, just announced this week by the EPO, a different appeal board has decided, in T 1123/09, on the very same question of whether it is possible for an application to be void ab initio for failing to comply with Rule 42(1)(b). The IPKat was initially surprised at seeing this, as he thought the question had been settled. Digging further, however, he noticed that the same examining division had been behind both appeals, with both cases having been managed by the same examiner, and with the same applicant. It must, the IPKat then thought, have been a simple matter of the later decision of the examining division being made before the earlier appeal had been settled. This was indeed the case. However, as the prosecution file shows, this was not the whole story. T 2321/08 was dated 12 May 2009, and the examining division decided on 19 May 2009 not to rectify their decision, as they could have done under Article 109 EPC, but instead to have another go, possibly hoping for a different outcome the second time round. This, of course, proved to be unsuccessful.

The IPKat, who feels some sympathy for the applicant in these cases, wonders whether it is entirely fair for a single examining division to behave in this way, and if there is anything that can be done about it other than to rely on the (hopefully) more common sense approach of the Boards of Appeal.