T 2154/15 - The risks of appealing a refusal

 Key points

• If you appeal a refusal decision, the Board is not restricted in any way in raising new objections. The introduction of the RPBA 2020 does not change this, despite the challenge of the applicant in this case.
• The  Board: “The purpose of the RPBA 2020 is to harmonise the procedure before the boards and increase their efficiency. In particular, Articles 12 and 13 RPBA 2020 give direction to the parties as regards the allowed scope of the appeal and amendments thereof. The board considers these Articles sufficiently clear in that they exclusively rule on the parties' procedural possibilities and not on the board's powers as defined by Article 111(1) EPC.”
• “However, Article 12(2) RPBA 2020 does not limit the board's powers of examination. ”
• Hence, the holding of G10/93 still holds good: “In ex parte proceedings, therefore, the boards of appeal are restricted neither to examination of the grounds for the contested decision nor to the facts and evidence on which the decision is based, and can include new grounds in the proceedings. This applies to both the patentability requirements which the examining division did not take into consideration in the examination proceedings and those which it indicated in a communication or in a decision to refuse the application as having been met.”

EPO T 2154/15 -  link

Reasons for the Decision

1. Admissibility of the appeal

The appeal was filed in due time and form and sufficiently substantiated. Thus, the appeal is admissible.

2. Request for referral - Article 112(1)(a) EPC

The request for referral of three questions to the Enlarged Board of Appeal is refused.

2.1 According to Article 112(1)(a) EPC, in order to ensure uniform application of law, or if a point of law of fundamental importance arises, the board of appeal shall refer any question to the Enlarged Board of Appeal if it considers that a decision is required for the above purposes. Thus, Article 112(1)(a) EPC provides the board with discretion to refer questions following a request from a party.

2.2 Article 111(1) EPC provides the Boards of Appeal with the discretion to either exercise any power within the competence of the department which was responsible for the decision appealed or to remit the case to that department for further prosecution. This provision defines the legal framework for the decision-making powers of the Boards. This legal framework - even as regards ex parte cases - was further interpreted by the Enlarged Board of Appeal (EBA) in G 10/93, point 3 of the reasons, as follows:

"In ex parte proceedings, therefore, the boards of appeal are restricted neither to examination of the grounds for the contested decision nor to the facts and evidence on which the decision is based, and can include new grounds in the proceedings. This applies to both the patentability requirements which the examining division did not take into consideration in the examination proceedings and those which it indicated in a communication or in a decision to refuse the application as having been met."

The EBA stated further (cf. G 10/93, point 4 of the reasons):

"Proceedings before the boards of appeal in ex parte cases are primarily concerned with examining the contested decision. If however there is reason to believe that a condition for patentability may not have been satisfied, the board either incorporates it into the appeal proceedings or ensures by way of referral to the examining division that it is included when examination is resumed."

The appellant argued essentially that because the Rules of Procedure of the Boards of Appeal as in force from 1 January 2020 (RPBA 2020) impose limitations on the parties, corresponding limitations should result for the Boards of Appeal.

The board does not agree with that argument. The purpose of the RPBA 2020 is to harmonise the procedure before the boards and increase their efficiency. In particular, Articles 12 and 13 RPBA 2020 give direction to the parties as regards the allowed scope of the appeal and amendments thereof. The board considers these Articles sufficiently clear in that they exclusively rule on the parties' procedural possibilities and not on the board's powers as defined by Article 111(1) EPC.

The appellant referred to the wording of Article 12(2) RPBA 2020 providing in particular that a judicial review is the "primary" object of the appeal proceedings. However, this formulation does not exclude that there are other important objects of the appeal proceedings, such as legal certainty for the public.

Article 12(2) RPBA 2020 continues to define that in view of this primary object, a party's appeal case shall be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based. This defines the scope within which the party may file their appeal. However, Article 12(2) RPBA 2020 does not limit the board's powers of examination. The board further does not agree with the appellant in that the board's powers should be equally limited as the party's scope of appeal. No need for "equal" treatment of a party and the board is apparent, because the party and the board fulfil different roles in appeal proceedings.

2.3 Moreover, the Rules of Procedure of the Boards of Appeal constitute second degree subsidiary law and thus cannot remove powers attributed to the boards by an Article of the EPC. Article 111(1) EPC gives discretion to the boards. This discretion cannot be overruled by the RPBA, a point which is explicitly codified in the RPBA, see in particular Article 23 RPBA.

Further, Article 11 RPBA foresees that the board shall not remit a case unless special reasons present themselves for doing so. The board therefore does not agree to the appellant's suggestion in question 3 above that Article 11 RPBA can be interpreted as including an obligation for the board to remit the case at hand.

2.4 Consequently, the board concludes that the RPBA do not limit the powers of the boards as defined in Article 111 EPC.

As explained above, the Board is of the view that the questions raised by the appellant do not require a decision from the Enlarged Board of Appeal, since they can clearly be answered on the basis of the provisions of the EPC, the Rules of Procedure of the Boards of Appeal in force, and the case law of the Boards of Appeal. Hence, the board decided to refuse the request for referral to the Enlarged Board of Appeal.