T 0691/18 - Interlocutory revision

Key points

• In this examination appeal, the amendments made in the main request address the clarity objections. The Board then discusses whether interlocutory revision should have been granted by the ED.
• " 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. 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 [...]." 
• "  Thus, even if the amendments raise new objections not previously discussed, interlocutory revision must be allowed since an applicant should in such circumstances have the right to examination at two instances. In particular this would enable the applicant to address the objection under Article 123(2) EPC, by argument and/or amendment, as well as, if appropriate, giving the examining division the opportunity to address the issues of novelty and inventive step."
This appears a good summary of established case law. EPO GL E-XII,7.4.2 still prescribe that interlocutory revision is not granted if "amendments made to the independent claims clearly do not meet the requirements of Art. 123(2)".

EPO T 0691/18 -  link

Reasons for the Decision

1. Admissibility

The appeal was filed in due time and form and is therefore admissible.

2. Clarity (Article 84 EPC)

The examining division based their decision on objections under Article 84 EPC regarding two features of the former independent claims.

On the one hand, it was argued that the resonant frequency of the electronic horn was not characteristic for the claimed driving circuit. This objection is overcome by the amendment to "connectable to" in the main request and in the first auxiliary request, and by the inclusion of the electronic horn into the subject-matter of the second auxiliary request in accordance with the Guidelines for Examination in the European Patent Office F-IV-4.14.

On the other hand, the examining division held the expression "consistent with" unclear in the sense of Article 84 EPC. The examining division had assumed that "consistent" meant "compatible" and found that there was a contradiction with the description which allegedly meant something more specific. However, the expression "consistent with" no longer forms part of any of the requests of the appellant. Consequently, neither of the two features on which the reasoning in the decision under appeal is based forms part of the current requests of the appellant as filed together with the statement of grounds of appeal.

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. 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 (T 139/87, point 4; T 1060/13, point 4.1). Thus, even if the amendments raise new objections not previously discussed, interlocutory revision must be allowed since an applicant should in such circumstances have the right to examination at two instances. In particular this would enable the applicant to address the objection under Article 123(2) EPC, by argument and/or amendment, as well as, if appropriate, giving the examining division the opportunity to address the issues of novelty and inventive step.

3. Conclusion

In the present case no other conclusion is possible than that the appeal is admissible and well founded, since the features leading to the objections under Article 84 EPC are no longer claimed.

The examining division should therefore have rectified its decision and continued with the examination of other requirements of the EPC.

Consequently, the board decides to remit the case.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.