T 0682/22 - Interlocutory revision and Art. 12 RPBA

Key points

•  This is an appeal against a refusal decision. The applicant files amended claims as sole request in appeal. The amendments make the claim undoubtedly novel over a prior right under Art. 54(3) EPC.
• The Board is of the view that interlocutory revision should have been granted.
• " Under Article 109(1) EPC, if the department whose decision is contested considers the appeal to be admissible and well founded, it shall rectify its decision. In the context of Article 109(1) EPC, an appeal is to be considered "well founded" if the main request submitted with the appeal includes amendments which clearly overcome the objections on which the decision relies, such that the examining division could reasonably be expected to recognise this and thus rectify its decision (cf. T 691/18, Reasons 2). " 
• The Board then adds a remark that I consider to be a major clarification: " The board, to avoid misunderstandings, also notes that in the context of Article 109(1) EPC, an "admissible appeal" is not to be conflated with any admittance considerations whatsoever as regards newly filed claim requests." 
• Hence, admissibility under Article 12 RPBA plays no role in interlocutory revision! (it seems).
• Strictly speaking, the admissibility of the amended claims could play a role under the "well-founded" prong of the test (as it does for appeal), but I think the Board would then have made that clear. 
• " It is established case law of the Boards of Appeal that other objections which arise in the current request but which were not the subject of the contested decision cannot preclude the application of Article 109(1) EPC (cf. T 691/18, Reasons 2, citing T 139/87, and Reasons 4; T 1060/13, Reasons 4.1). Thus, even if the amendments raise "new" objections not previously discussed, interlocutory revision must be allowed since the main purpose of this legal instrument is to shorten the appeal proceedings to the benefit of procedural expediency and economy and to avoid unnecessary workload for the Boards of Appeal in the interest of both the appellant and the EPO (see e.g. T 1060/13, Reasons 4.1)." 
• " Nonetheless, some passages of those Guidelines are not consistent with those conclusions. [The Board] considers it appropriate to point out that there are (still) some significant inconsistencies between the current Guidelines and the established case law as to the interpretation of Article 109(1) EPC. More specifically, according to those Guidelines (see e.g. chapter E-XII, section 7.4.2, 6th paragraph), "[i]f amendments made to the independent claims clearly do not meet the requirements of Art. 123(2), interlocutory revision is not granted, but the division sends the file to the boards of appeal. If there are doubts as to whether the amendments meet the requirements of Art. 123(2) or the amendments clearly meet the requirements of Art. 123(2), the division checks whether the amended claims overcome the ground(s) for refusal"." 
• " Moreover, in arriving at a decision on granting interlocutory revision, according to those Guidelines (cf. E-XII, section 7.4.2, 5th paragraph), the examiner is supposed to take into account all the grounds mentioned in the original decision, including the main or supporting arguments already raised in previous objections to patentability to which the applicant has had an opportunity to respond and to which reference is made in the grounds of refusal (e.g. objections mentioned in previous communications, during personal consultation or at oral proceedings). Conversely, [*] on the basis of the established case law, interlocutory revision must be granted if the amendments clearly overcome the grounds for refusal, even if further new objections arise, i.e. irrespective of whether new objections under Article 123(2) EPC [arise ?] or whether previous objections referenced in the appealed decision were raised by the first-instance department." 
• * = perhaps to be understood as "The Board, however, believes that on the basis of the established case law, interlocutory revision" ...  
• The part in italics may pertain to the remark in the refusal decision that: "It is also underlined that the novelty objections based on document D2 is abandoned, since D2 seems not to disclosed [sic] the sending from MeNB to SeNB of the CSG status."
• " the present board does not follow the conclusions drawn in case T 2445/11. The fact that the first-instance proceedings must be "repeated" is a consequence of the very fact that the examining division decided to refuse an application on specific grounds - and not on others - and that these specific grounds are overcome with the appeal. In such a situation and in line with the established case law, Article 109(1) EPC obliges the examining division to rectify its decision and continue examination of the application." 
• " 2.4.5 Hence, the established case law (see point 2.4.2 above) and the current Guidelines are inconsistent with each other."
• " As to the present case, it is apparent to the board that, in view of the statements made by the examining division (cf. point 2.2.2 above), the addition of at least feature (d) (taken from former claims 5 and 18) to the independent claims clearly overcomes all the objections raised in the appealed decision." 
• The Board indeed does not consider the admissibility of the amended claims under, say, Art. 12(6) RPBA. Possibly the Board is of the view that Art.12 RPBA is *not to be considered under Art.109. That would be quite an interesting development because then you could get amendments "in" with the Statement of grounds that are inadmissible under Art.12 RPBA. [* - edit 03.01.2024.]
• As a comment, this may be quite an important development for the practice of appeals against refusal decisions, especially where the main request is amended by adding a feature to address novelty or inventive step objections. 

EPO 

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

https://www.epo.org/law-practice/case-law-appeals/recent/t220682eu1.html

2.3 The board sees no reason to reverse the above assessment of the examining division. It follows that the subject-matter of independent claims 1 and 11 is new over D5 (Article 54(3) EPC).

2.4 Interlocutory revision (Article 109(1) EPC)

2.4.1 Under Article 109(1) EPC, if the department whose decision is contested considers the appeal to be admissible and well founded, it shall rectify its decision. In the context of Article 109(1) EPC, an appeal is to be considered "well founded" if the main request submitted with the appeal includes amendments which clearly overcome the objections on which the decision relies, such that the examining division could reasonably be expected to recognise this and thus rectify its decision (cf. T 691/18, Reasons 2). The board, to avoid misunderstandings, also notes that in the context of Article 109(1) EPC, an "admissible appeal" is not to be conflated with any admittance considerations whatsoever as regards newly filed claim requests.

2.4.2 It is established case law of the Boards of Appeal that other objections which arise in the current request but which were not the subject of the contested decision cannot preclude the application of Article 109(1) EPC (cf. T 691/18, Reasons 2, citing T 139/87, and Reasons 4; T 1060/13, Reasons 4.1). Thus, even if the amendments raise "new" objections not previously discussed, interlocutory revision must be allowed since the main purpose of this legal instrument is to shorten the appeal proceedings to the benefit of procedural expediency and economy and to avoid unnecessary workload for the Boards of Appeal in the interest of both the appellant and the EPO (see e.g. T 1060/13, Reasons 4.1).

2.4.3 The conclusions of point 2.4.2 are in principle also reflected in the Guidelines for Examination in their edition of March 2022. See e.g. chapter E-XII, section 7.1, 4th paragraph:

"The department concerned will rectify its decision if convinced in the light of the grounds of appeal that the appeal is admissible and well founded. This could arise, for example, because:... (iii) the decision of the department concerned does not appear to be incorrect, but the applicant ... files amendments to the application, which overcome the objections of the decision under appeal (see T 139/87)",

and chapter E-XII, section 7.4.2, 1st sentence:

"If amendments clearly overcome the grounds for refusal, interlocutory revision is granted even if further new objections arise".

Nonetheless, some passages of those Guidelines are not consistent with those conclusions. Article 20(2) RPBA 2020 stipulates that "[i]f, in its decision, a Board gives a different interpretation of the Convention from that provided for in the Guidelines for Examination, it shall state its grounds for doing so if it considers that the decision will be more readily understood in the light of such grounds". Therefore, this board - as did the deciding board in case T 1060/13 (cf. Reasons 4.3) - considers it appropriate to point out that there are (still) some significant inconsistencies between the current Guidelines and the established case law as to the interpretation of Article 109(1) EPC. More specifically, according to those Guidelines (see e.g. chapter E-XII, section 7.4.2, 6th paragraph), "[i]f amendments made to the independent claims clearly do not meet the requirements of Art. 123(2), interlocutory revision is not granted, but the division sends the file to the boards of appeal. If there are doubts as to whether the amendments meet the requirements of Art. 123(2) or the amendments clearly meet the requirements of Art. 123(2), the division checks whether the amended claims overcome the ground(s) for refusal".

Moreover, in arriving at a decision on granting interlocutory revision, according to those Guidelines (cf. E-XII, section 7.4.2, 5th paragraph), the examiner is supposed to take into account all the grounds mentioned in the original decision, including the main or supporting arguments already raised in previous objections to patentability to which the applicant has had an opportunity to respond and to which reference is made in the grounds of refusal (e.g. objections mentioned in previous communications, during personal consultation or at oral proceedings). Conversely, on the basis of the established case law, interlocutory revision must be granted if the amendments clearly overcome the grounds for refusal, even if further new objections arise, i.e. irrespective of whether new objections under Article 123(2) EPC or whether previous objections referenced in the appealed decision were raised by the first-instance department.

2.4.4 In that regard, the present board is aware of T 2445/11, which hints at a different approach and disagrees with the approach adopted in T 1060/13 as possibly being "too rigid, as it leaves no room for a pragmatic assessment of the situation with a view to procedural efficiency and may result in a needless repetition of the first-instance proceedings" (cf. Reasons 8). This decision is also referred to in the Guidelines (cf. E-XII, section 7.4.2).

However, the present board does not follow the conclusions drawn in case T 2445/11. The fact that the first-instance proceedings must be "repeated" is a consequence of the very fact that the examining division decided to refuse an application on specific grounds - and not on others - and that these specific grounds are overcome with the appeal. In such a situation and in line with the established case law, Article 109(1) EPC obliges the examining division to rectify its decision and continue examination of the application.

2.4.5 Hence, the established case law (see point 2.4.2 above) and the current Guidelines are inconsistent with each other.

2.4.6 As to the present case, it is apparent to the board that, in view of the statements made by the examining division (cf. point 2.2.2 above), the addition of at least feature (d) (taken from former claims 5 and 18) to the independent claims clearly overcomes all the objections raised in the appealed decision.

2.4.7 It follows that the appeal is "well founded" within the meaning of Article 109(1) EPC. There is also no apparent reason to contest that the appeal is "admissible" within the meaning of Article 109(1) EPC. The examining division should therefore have indeed rectified its decision and continued with the examination of compliance with the requirements of the EPC. However, for whatever reasons, they did not do so.

2.5 Reimbursement of the appeal fee (Rule 103 EPC)

2.5.1 The appellant originally requested the reimbursement of the appeal fee under Rule 103(1)(a) EPC, according to which the appeal fee shall be reimbursed in full in the event of interlocutory revision or where the board deems an appeal to be allowable, if such reimbursement is equitable by reason of a "substantial procedural violation".

2.5.2 In response to the board's communication, the appellant requested the partial reimbursement of the appeal fee. The appellant, however, did not specify whether this request was meant to supersede the original one or whether it was meant to be a subsidiary request.

2.5.3 In any event, the mere fact that the examining division did not rectify its decision cannot constitute a "substantial procedural violation" justifying a reimbursement of the appeal fee under Rule 103(1)(a) EPC (see e.g. T 1060/13, Reasons 4.5 and the further decisions cited therein). The appellant did not explain which specific actions of the examining division should indeed be regarded as a substantial procedural violation. Nor can the board identify any objective deficiencies in the examination proceedings. Thus, a reimbursement of the appeal fee in full under Rule 103(1)(a) EPC is not justified.

2.5.4 However, given that the appellant's indication of

non-attendance and their request for partial reimbursement was submitted within one month of notification of the board's communication under Article 15(1) RPBA 2020 (see also point 1.1 above), the appeal fee is to be partially reimbursed under Rule 103(4)(c) EPC.

3. Remittal of the case (Article 111(1) EPC)

3.1 It follows from the above that the subject-matter of independent claims 1 and 11 of the main request is new (Article 54(3) EPC) in view of document D5 and that the examining division should have rectified its decision. In the board's view, this represents a "special reason" within the meaning of Article 11 RPBA 2020 for a direct remittal of the case.

3.2 Consequently, the board remits the case to the examining division for further prosecution under Article 111(1) EPC on the basis of the sole claim request on file.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the examining division for further prosecution.