T 0893/13 - Interlocutory revision and fee

T 0893/13 - [C]
For the decision, click here.

• After a first refusal, the applicant filed an appeal and interlocutory revision was granted. Thereafter the application was again refused, the applicant filed an appeal, in addition requesting a refund of the first appeal fee.
• The Board decides that it is competent to decide on this request for a refund, and that the request was timely filed in the second appeal. 

Summary of Facts and Submissions

I. The appeal lies against the decision of the examining division, with reasons dispatched with letter of 14 No­vember 2012, to refuse the European patent application No. 07 120 091.9.

II. Earlier in the proceedings, on 3 November 2011, the exa­mi­ning division had already decided to refuse the appli­­cation but then, in response to an appeal, had rectified its decision under Article 109(1) EPC and con­tinued examination.

III. The earlier decision was primarily based on a lack of clarity, [...]

IV. Reimburse­ment of the first appeal fee was not re­ques­ted in the first appeal and was not ordered by the exami­ning division of its own motion. After rectifi­ca­­tion, how­ever, the appellant requested that the exami­ning divi­sion order the reimbursement of the first appeal fee.

V. The decision under appeal is based on the finding that the application did not comply with Articles 83 and 84 EPC. The decision also refers to the document D1: [...] and, in a section entitled "Further Remarks", suggests that the claimed invention "appears" to lack an inven­tive step over D1. Moreover, the examining division ex­plains (see page 3, 4th paragraph) that it does not con­sider a substantial proce­du­ral violation to have occurred during examination lea­ding to the first appeal and "is therefore un­able to reimburse the appeal fee under Rule 103(2) EPC".

VI. Notice of appeal was filed on 18 January 2013, the appeal fee being paid on the same day. A statement of grounds of appeal was received on 25 March 2013. The appellant requested that the decision under appeal be set aside and that a patent be granted based on the documents attached to the grounds of appeal, in par­ti­cular claims 1-14. It also requested that the fee for the previous, i.e. first appeal be reim­bursed.

VII. With a summons to oral proceedings, the board informed the appellant of its preliminary opinion that the claimed invention lacked clarity, Article 84 EPC 1973, sufficiency of disclosure, Article 83 EPC 1973, and inven­tive step, Article 56 EPC 1973. The board also referred the appellant to the jurispru­dence of the boards of appeal, according to which the board was not com­pe­tent to deal with the request for reim­burse­ment of the first appeal fee.

VIII. In response to the summons, with letter dated 25 Au­gust 2015, the appellant withdrew its request for oral proceedings. The oral proceedings were then cancelled.

Reasons for the Decision

Reimbursement of the first appeal fee

1. Following a decision of the Administrative Council of 13 December 2013, an amended version of Rule 103 EPC entered into force on 1 April 2014. According to Ar­ticle 2(2) of that decision, the new rule also applies to appeals pending at the date of entry into force, hence also to the present one.

2. The relevant parts of Rule 103 EPC as presently in force read as follows:

"(1) The appeal fee shall be reimbursed in full
(a) in the event of interlocutory revision or where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation, [...]
(3) The department whose decision is impugned shall order the reimbursement if it revises its decision and considers reimbursement equitable by reason of a substantial procedural violation. In all other cases, matters of reimbursement shall be decided by the Board of Appeal."

Competence of the board

3. Firstly, it has to be decided whether the board is com­petent to decide on the appellant's request to have the first appeal fee reimbursed even though the request was filed only after the examining division rectified its decision in response to the first appeal.

3.1 According to Rule 103(2) EPC, the examining division or­ders reimbursement if it concludes that it is equi­table by reason of a substantial procedural violation. Since Rule 103 EPC does not require there to be a re­quest for reimbursement, the examining divi­sion has to assess of its own motion whether reimburse­ment of the appeal fee is equitable under the cir­cum­stances (see also ­­G 3/03, OJ EPO 2005, 34, reasons 3, 2nd sen­tence). The board has no reason to doubt that the exa­mi­ning divi­sion ful­filled this obligation, as it also express­ly declared in the decision under appeal (page 3, 4th paragraph).

3.2 In J 32/95 (OJ EPO 1999, 713) it was decided that the department whose decision has been impugned does not have the power to refuse a requested reimbursement of the appeal fee but that such power lies with the board of appeal (see the headnotes). This decision was con­firmed by G 3/03 (OJ EPO 2005, 34, see headnote 1). New Rule 103 EPC was expressly meant to codify J 32/95 (see OJ EPO Special Edition No. 1, 2003, 184).

3.3 Although under Rule 103 EPC the examining division has the power to order reimbursement of appeal fee, it does not have the power to decide that the appeal fee is not reimbursed (see also G 3/03, reasons 2). Rule 103 EPC expressly provides that "all other matters of reim­burse­ment shall be decided by the Board of Appeal".

3.4 Therefore, according to Rule 103 EPC the board is com­pe­tent to decide on reimbursement of the appeal fee whenever the examining division revises its de­ci­sion and does not order reimbursement itself.

4. In T 21/02 it was decided that "Where a request for reimbursement of the appeal fee [...] was submitted only after the contested decision had been rectified [...], failing a decision of the department of first instance, no legal basis exists for the Board of Appeal to decide on that request" (see headnote). It was reasoned that, if an appeal "had been fully dealt with (by way of inter­locu­tory revision) and was, thus, no longer pending, when the request for re­imbursement was submitted, [...] the request was sub­mitted in the ab­sence of a pending appeal and could not, hence, con­sti­tute an ancillary issue to be dealt with in appeal pro­ceedings" (see reasons 5). It was further argued that, when a request for reimburse­ment was filed only after rectification, the procedural si­tu­ation was the same as if "the Board of Appeal had decided upon it and re­mitted the case to the depart­ment of first in­stance for further prose­cu­tion" (see still reasons 5; see also T 242/05, headnote).

5. The board disagrees with this finding.

5.1 In particular, the board disagrees that non-reimburse­ment of the appeal fee by the examining division in the case of inter­locutory re­vision of its decision must be equa­­ted with the situation in which the board of appeal has refused a corresponding request.

5.2 G 3/03 states (reasons 3, 4th sen­tence) that "In the absence of a request for reim­burse­ment of the appeal fee, the decision of the depart­ment of the first in­stance granting interlocutory re­vi­sion pursuant to Article 109(1) EPC will make no mention of the issue of reimbursement of the appeal fee, and the appellant will not be adversely affected by the decision."

5.3 Apparently, the appellant is not adversely affected by the granting of interlocutory revision itself. Thus the board takes the main point of that statement in G 3/03 to be that an appellant who did not request reimburse­ment of the appeal fee is not adversely affected by the fact that the examining division did not order reim­burse­ment.

5.4 Since the examining division is not competent to decide that the appeal fee is not reimbursed, an in­ter­locutory revision without an order for reim­burse­­ment cannot be construed as a decision not to re­im­burse.

5.5 Rather, the board con­si­ders that the request for re­imbursement of the appeal fee can be validly filed even after the examining divi­sion has granted interlocutory revision, since Rule 103 EPC entrusts the board with the decision on "all other matters of reimbursement" based on only the two conditions mentioned: That the decision was rectified and the appeal fee was not reimbursed by the exa­mining divi­sion.

6. Therefore, the board considers itself competent to deal with the appellant's request for reimbursement of the first appeal fee.

Termination of financial obligations

7. According to Article 13(2) RFees, rights against the Organisation for the refunding by the European Patent Office of fees are extinguished after four years from the end of the calendar year in which the right arose. The appellant's potential right to have its appeal fee reimbursed arose from the decision of the examining division to grant interlocutory revision. This decision bears the date 26 March 2012, so the Office's potential obligation to reimburse the fee is not extinguished until the end of 2016.

[...]

13. In summary, the board concludes that no substantial pro­cedural error occurred in the examining proceedings leading to the first appeal or the examining division's decision to rectify and that, therefore, the request for reimbursement of the first appeal fee must be rejec­ted.

[...]

17. In summary, the board comes the conclusion that claim 1 lacks clarity, Article 84 EPC 1973.

Order

For these reasons it is decided that:

1. The appeal is dismissed.

2. The request for reimbursement of the first appeal fee is refused.