T 1849/12 - Appeal without appealable decision

Key points

• With the "staying of proceedings" being in place for referral G3/19 (Pepper) (link), some patent applications for plants may face the third "staying" (with the first and second staying being for Broccoli / Tomato I and II). Hence this decision (already from 19.03.2013) might be of renewed interest. 
• The translation below is from the (former) K's Law Blog (post).
• In this examination appeal, the search report was positive. The applicant then requested an early grant and auxiliary an appealable decision. The Examining Division then sent a Communication explaining that there was no legal basis for an appealable decision. The applicant then filed an appeal, hence before a decision to refuse the application.
• The Board held that the appeal was admissible. The Communication is "a final and legally binding statement on the request of the appellant, which, as to its content, has the nature of a decision within the meaning of A 106(1).". The decision is an interlocutory decision which was not made separately appealable by the ED. "The EPC does not contain an explicit provision [that allows to determine] in which cases a separate appeal against so-called interlocutory decisions has to be allowed.  Rather, the legislator has given the deciding department discretion to decide [on that matter]". The Board reviews this exercise of discretion and concludes that "that the ED, when refusing the request that an appealable decision be issued has insufficiently taken account of an essential aspect and has exercised its discretion in an erroneous way. Therefore, the communication of the ED is to be considered to be separately appealable." 
• However, the Board does not allow the appeal because the need for a top-up search would prevent grant of a patent before 18  months from the priority date. 

EPO T 1849/12 - link


Translation
[2.1.3] However, the Board shares the opinion of the appellant that its request for a Rule 71(3) communication being issued immediately has been dealt with conclusively in the impugned communication and has been refused in a final manner by the ED. This is because, within the framework of the examining proceedings, the ED has made a final and legally binding statement on the request of the appellant, which, as to its content, has the nature of a decision within the meaning of A 106(1).


As this decision has resulted in the refusal of the request of the appellant to have the patent and the rights under A 64 related to it granted soon, [the appellant] is also adversely affected.

Admission of the separate appeal

[2.2.1] Pursuant to A 106(2), a decision which does not terminate proceedings as regards one of the parties can only be appealed together with the final decision, unless the decision allows a separate appeal.

The EPC does not contain an explicit provision [that allows to determine] in which cases a separate appeal against so-called interlocutory decisions has to be allowed.  Rather, the legislator has given the deciding department discretion to decide [on that matter], according to its duties (Travaux préparatoires to the EPC 1973, Report on the second session of the Coordination Committee, May 15-19, 1972, document BR/209/72, point 67).

It is undisputed that a first instance department which, in application of the EPC, has to take discretionary decisions has a margin of discretion which the Board of appeal has to respect. The Board may only should only overrule the way in which a first instance department has exercised its discretion if it comes to the conclusion either that the first instance department in its decision has not exercised its discretion in accordance with the right principles, or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion cf. G 7/93 [2.5-6]).

[2.2.2] The impugned communication of the ED, which is to be qualified as a decision, does not terminate the examination proceedings with respect to the appellant. The ED has expressly refused the auxiliary request of the appellant for an appealable decision and has justified this by referring to the lack of an appropriate legal basis.

When doing so, it apparently has not sufficiently taken account of the fact that the request of the appellant, to allow the patent to be granted soon, by immediately issuing a R 71(3) communication, could not have been granted in a meaningful way in case a successful appeal had been filed after the final decision on the grant. Thereby it has adversely affected [the appellant] by issuing its communication, in a way that cannot be remedied by means of an appeal after the final decision.

[2.2.3] Nor could the appellant avail itself of another legal remedy provided by the EPC against the impugned communication. Under these circumstances, the ED should have allowed a separate appeal because only an appeal could offer the appellant an opportunity to remedy the adverse effect within the framework of a judicial examination of the refusal of its request. This is all the more so because the EPC does not provide for an appeal against inaction of the EPO (cf. J 26/87).

[2.2.4] Thus the Board comes to the conclusion that the ED, when refusing the request that an appealable decision be issued has insufficiently taken account of an essential aspect and has exercised its discretion in an erroneous way. Therefore, the communication of the ED is to be considered to be separately appealable.

[2.3] As the appeal satisfies all the other requirements of A 106 to A 108 and R 97 and R 99, it is admissible.