T 2377/17 - Excessive length of procedure

Key points

• In this examination appeal, the Board considers the excessive length of the first instance procedure to be a substantial procedural violation and orders refund of the appeal fee (the Board also considers the claims allowable).
• The EP Entry was in 1999, PACE was requested in 2012, the first Communication was issued in 2014, a response was timely filed. A second PACE request was filed, in November 2015 Summons were issued, oral proceedings were held in June 2016. An Intention to grant was issued based on the 2nd Auxiliary Request, in response the applicant maintained the main request. The refusal was issued in May 2017. Oral proceedings before the Board took place in December 2018. 
• The Board: " In its decisions T 823/11 of 21 December 2015 and T 2707/16 of 11 December 2018, this Board held that unnecessary, excessive delays in the first-instance proceedings resulting in an unreasonable total duration of the grant proceedings may amount to a substantial procedural violation in view of both the applicant's and the public's legitimate interest in a speedy conclusion of the proceedings. In the present case, even though the Board has dealt with the appeal considerably out of turn, it is highly unlikely that the EPO will be able to publish the mention of the grant of a patent before the term of the patent expires. The delay of 14 years before the Examining Division issued its first substantive communication therefore has to be considered to be a substantial procedural violation." 
• " It is true that reimbursement of the appeal fee cannot be seen as a true compensation for the costs incurred as a result of delays in the proceedings. But, in the Board's view, reimbursement of the appeal fee may well be "equitable" even if it is not full compensation."
• As a comment, I wonder if EPO management cares about this kind of decisions at all. 
• Interesting fact: the Swedish Patent Office was the ISA, but there is no supplementary ESR because under the applicable old rules, the SESR is dispensed with in case of a European ISA.

EPO T 2377/17 - link

7. Request for reimbursement of the appeal fee

7.1 The appellant requested reimbursement of the appeal fee under Rule 103(1)(a) EPC in view of the delays in the first-instance proceedings. For this request to be allowable, it has to be established that the delays form a substantial procedural violation which renders reimbursement of the appeal fee equitable.

7.2 The Examining Division became responsible for the application's examination on 20 December 1999, the day on which the requests for entry into the regional phase and examination became effective (no supplementary European search report was to be drawn up in view of the decision under Article 157(3)(a) EPC 1973 of the Administrative Council of 21 December 1978, OJ EPO 1979, 4, Corr. 50). It then took more than 14 years until, on 7 February 2014, the Examining Division issued its first substantive communication under Article 94(3) EPC. After the appellant's reply by letter of 2 May 2014, it took a further 18 months for the Examining Division to issue its next action on 12 November 2015, which was a summons to oral proceedings. During these periods of delay, no procedural complications occurred that could have prevented the Examining Division from carrying out the substantive examination of the application.

7.3 In its decisions T 823/11 of 21 December 2015 and T 2707/16 of 11 December 2018, this Board held that unnecessary, excessive delays in the first-instance proceedings resulting in an unreasonable total duration of the grant proceedings may amount to a substantial procedural violation in view of both the applicant's and the public's legitimate interest in a speedy conclusion of the proceedings. In the present case, even though the Board has dealt with the appeal considerably out of turn, it is highly unlikely that the EPO will be able to publish the mention of the grant of a patent before the term of the patent expires. The delay of 14 years before the Examining Division issued its first substantive communication therefore has to be considered to be a substantial procedural violation.

7.4 The remaining question to be answered is whether reimbursement of the appeal fee is equitable in view of the circumstances of the case. In this respect, it was pointed out in decision T 2707/16, reasons 35, that the requirement that the procedural deficiency was causal for the necessity to appeal, which in the jurisprudence of the boards of appeal is often considered to be a necessary condition for reimbursement of the appeal fee to be equitable, does not in fact sufficiently take into account all possible circumstances in which reimbursement may be equitable.

7.5 In decision T 315/03 (published in abbreviated form in OJ EPO 2006, 15), the deciding board considered - in the context of requests for payment of costs to be met by the EPO in respect of a second oral proceedings before the Opposition Division - that reimbursement of the appeal fee in view of an unjustified delay in the opposition proceedings was not equitable because some of the parties had not appealed but would have had the same claim to some relief for the delay all parties had suffered, and because the appeal fee was a trivial sum compared with the gravity of the delay and the likely additional costs thereby incurred.

It is true that reimbursement of the appeal fee cannot be seen as a true compensation for the costs incurred as a result of delays in the proceedings. But, in the Board's view, reimbursement of the appeal fee may well be "equitable" even if it is not full compensation.

7.6 In case T 2707/16, reimbursement of the appeal fee was found not to be equitable because the applicant there had taken insufficient action to try to move the proceedings forward. In the present case, the appellant remained inactive for over 12 years before it requested accelerated examination. But the Examining Division then still did not succeed in issuing a communication within the period of six months to which it had committed; instead, it required close to two more years. And after the appellant had filed a timely reply, it again took more than 18 months - and a second request for accelerated examination, again leading the Examining Division to commit itself to a date it ultimately did not keep - before the Examining Division issued the summons to oral proceedings. The total delay therefore includes periods of unjustified delay that occurred despite the appellant's attempts to move the case forward. In these circumstances, the Board considers reimbursement of the appeal fee to be equitable.