T 0929/18 - Refusal without prior art search

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from Just Patent Law Blog https://justpatentlaw.blogspot.com/
T 0929/18 - Refusal without prior art search
https://justpatentlaw.blogspot.com/2022/10/t-092918-refusal-without-prior-art.html

Key points

• This is an appeal against a refusal decision.
• The invention is about "mobile location data sharing". The filing date is in 2009; the search report was established in 2009; the first Communication was issued in 2012; next action: summons oral proceedings in 2017, refusal decision in 2017. The Board's preliminary opinion was negative. 
• The search report did not cite any documents but rather stated that "the technical aspects identified in the present application are considered part of common general knowledge" (link). 
• The Board: "The appellant's request that a patent be granted on the basis of the main request, or one of the first to third auxiliary requests, cannot be allowed because no patent can be granted without a prior art search (Article 52(1) in combination with Article 92 and Rule 61(1)EPC)."
• The independent claims as filed indeed seem to broadly specify location sharing in a group by a mobile phone for a limited time, i.e. with instructions to share the information for a limited time and to stop sharing the information thereafter. 
• I note that in 2009, the previous version of Rule 63 applied and that Rule 137(5), second sentence, accordingly does not apply to the present application.
• "The examining division refused the application for lack of inventive step without referring to any document. Essentially, they considered that the technical character of independent [method] claim 5 resided solely in the implementation of an administrative scheme on a notoriously known electronic data processing system"
• I note that the claims as pending at the time of the refusal decision were significantly amended compared to the claims pending at the time of the search.
• "The Board does not see a problem with the practice of referring to notorious knowledge in such cases; it has the obvious benefit of avoiding the need to prove facts that are self-evident or indisputably well known."
• "According to the Boards' jurisprudence (see e.g. T 1242/04 [...]), it is possible to raise an objection of lack of inventive step without documentary prior art if the technical features of the invention are notorious, i.e. so well known that it cannot reasonably be contested that they are prior art."
• "Claim 5 refers to mobile user devices in a "peer-to-peer" data sharing group."
• " In its communication accompanying the summons to oral proceedings, the Board had misgivings about the peer-to-peer aspect of the invention. Firstly it did not appear to be part of the inventive concept in the sense that it contributed to the problem that the application set out to solve. It also rather appeared from the way in which the application presented the invention that "peer-to-peer" was part of the background framework or at least technically irrelevant." 
• "At the oral proceedings, the appellant argued that the application did not describe the claimed aspects of peer-to-peer networking as known, and moreover that limiting the time period during which the devices shared data was particularly advantageous in mobile peer-to-peer networks."
• "The Board considers that, taken together, the features of the mobile device, peer-to-peer, group data and address arrangement and the relay or router [...] define details of an electronic communication architecture that cannot be dissected into non-technical and technical parts. "
• "Although the Board still has doubts about the significance of the peer-to-peer feature it would be unfair to judge such issues without proper prior art. This would be to put the cart before the horse by putting the substantive examination before the search (see e.g. T 1515/07 []). Indeed, a search may reveal prior art which puts the invention in a perspective that is different from what was originally set out in the application."
• " Also, there has been a lot of development in mobile communication networks since the filing date of the application. Thus, what is self-evident now might not have been so in 2009. Therefore, the Board judges that a search is necessary."

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://justpatentlaw.blogspot.com/2022/10/t-092918-refusal-without-prior-art.html