T 0736/14 (Selecting invention to be examined/QUALCOMM) of 25.2.2016

European Case Law Identifier: ECLI:EP:BA:2016:T073614.20160225
Date of decision: 25 February 2016
Case number: T 0736/14
Application number: 09163209.1
IPC class: H04L 27/26
Language of proceedings: EN
Distribution: C
Download and more information:
Decision text in EN (PDF, 407.438K)
Documentation of the appeal procedure can be found in the Register
Bibliographic information is available in: EN
Versions: Unpublished
Title of application: Frequency division multiple access for wireless communication
Applicant name: Qualcomm Incorporated
Opponent name: -
Board: 3.5.05
Headnote: -
Relevant legal provisions:
European Patent Convention 1973 Art 21(3)(a)
European Patent Convention 1973 Art 113(1)
European Patent Convention 1973 Art 82
European Patent Convention R 137(3)
European Patent Convention R 103(1)(a)
Guidelines for examination in the EPO H-II, 7(1)
Rules of procedure of the Boards of Appeal Art 11
Keywords: Competence of the Legal Board of Appeal - (no)
Violation of principle of good faith - (no)
Correct exercise of first-instance discretionary power - (no)
Violation of right to be heard - (yes)
Remittal to first instance for further prosecution - (yes)
Reimbursement of appeal fee - (yes)

If an applicant whose application is non-unitary responds unclearly and/or in a misleading way to an invitation from the examining division to designate which searched invention it wishes to prosecute further (e.g. by submitting a main request covering one invention and an auxiliary request covering the other invention searched), it cannot be automatically assumed that the applicant selected the invention covered by the main request for examination. Rather, the examining division must clarify, e.g. via a further communication, which of the searched inventions the applicant actually wants it to examine. Confronting the applicant with an irrevocable decision not to admit an auxiliary request covering one of the inventions searched, without giving an opportunity to comment on its admissibility beforehand, is regarded as a substantial procedural violation (see Reasons, point 3).

Cited decisions:
G 0002/92
G 0002/97
J 0008/81
J 0007/82
R 0004/09
T 0162/82
T 0169/96
T 1561/05
T 1705/07
T 1854/08
T 1060/13
Citing decisions:
T 0861/12
T 0578/13

16 references found.

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EPC Implementing Rules

EPO Guidelines - C Procedureal Aspects of Substantive Examination

Offical Journal of the EPO

Case Law Book: IV Divisional Applications

Case Law of the Enlarged Board

General Case Law