T 0955/20 - (I) Incorrect use of interlocutory revision

Key points

•  "In its first decision, the examining division refused the application for lack of inventive step over document D1. It then allowed the appeal filed against this decision by granting interlocutory revision under Article 109(1) EPC. Subsequently, it issued a communication as an annex to a summons to oral proceedings, in which the objection of lack of inventive step over document D1 was maintained with only slightly modified reasoning."
• The ED refuses the application again. "According to point 11 of the facts and submissions section of the second refusal decision, the examining division felt that it had not addressed the "probabilistic dictionary" feature of the invention in sufficient detail and had therefore rectified its first decision."
• The applicant appeals. 
• "[in] these second appeal proceedings, the appellant argued that the examining division had committed a substantial procedural violation by granting interlocutory revision under Article 109(1) EPC in relation to the appeal against the first refusal decision and then maintaining its objection of lack of inventive step against the unamended claims in its next communication. Article 109(1) EPC gave the examining division the power to rectify its decision if "the appeal is admissible and well founded" but not the right to "finesse" its previous objections at the expense of an appeal fee and three years of procedural delay."
• The Board: "The purpose of Article 109(1) EPC is to cut short the appeal proceedings in clear and straightforward cases in the interest of procedural efficiency, in particular when the examining division can immediately recognise that the board of appeal, taking into account the statement of grounds of appeal, would set aside the decision (see decisions G 3/03, Reasons 3.4.1; T 919/95, Reasons 2 and 2.1). This purpose is contravened if, as here, the examining division grants interlocutory revision when it still agrees with the grounds for the refusal but considers that some aspect of the decision's reasoning can be improved. In this respect, the board notes that the examining division, when granting interlocutory revision, apparently found its first decision to be sufficiently reasoned within the meaning of Rule 111(2) EPC, since it did not ex officio order the reimbursement of the appeal fee under Rule 103(1)(a) EPC."
• "Hence, the examining division applied Article 109(1) EPC for a purpose for which the provision is not intended and thus committed a procedural violation. In view of the considerable and unnecessary procedural delays which this has caused, the second refusal decision having been issued just over three years after the first refusal decision, the procedural violation must be considered to be a substantial one (see decision T 2707/16, Reasons 34)."
• On the refund of the appeal fee: "the appellant was no longer able to request reimbursement of the first appeal fee when it became aware that the examining division might have committed a substantial procedural violation by granting interlocutory revision. To prevent the appellant from being deprived of the possibility to assert its rights under Rule 103(1)(a) EPC, the board considers therefore that the substantial procedural violation in the decision to grant interlocutory revision may justify the reimbursement of the second appeal fee."
• "In the present case, the reimbursement of the second appeal fee is equitable. If the examining division had not granted interlocutory revision, there would have been no second appeal against what is essentially a copy of the first refusal decision"
• "However, under Rule 103(1)(a) EPC the board cannot order the reimbursement of the second appeal fee if it does not allow this second appeal. This shows that a fully equitable solution in a situation such as the present one may not always be achievable."
• "As a rule, a fundamental deficiency which is apparent in the first-instance proceedings constitutes a special reason for remitting the case to the department of first instance for further prosecution (Article 11 RPBA 2020) and consequently allowing the appeal. In the circumstances of this case, however, it is not an option to remit the case before the board has at least examined the main request, which was the subject of both refusal decisions."
• " the subject-matter of claim 1 lacks inventive step (Article 56 EPC)."
• The Board admits the Auxiliary Request, does not examine it in substance, and remits the case.
•  "In the board's judgment, the need for an equitable outcome in the present case outweighs the interest of the EPO and the public in a swift conclusion of these grant proceedings."
• " the case is to be remitted to the examining division for further prosecution on the basis of the auxiliary request, and the second appeal fee is to be reimbursed."
• 
  

EPO T 0955/20

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/t200955eu1.html

Reasons for the Decision

1. Alleged substantial procedural violation

1.1 In its first decision, the examining division refused the application for lack of inventive step over document D1. It then allowed the appeal filed against this decision by granting interlocutory revision under Article 109(1) EPC. Subsequently, it issued a communication as an annex to a summons to oral proceedings, in which the objection of lack of inventive step over document D1 was maintained with only slightly modified reasoning.

According to point 11 of the facts and submissions section of the second refusal decision, the examining division felt that it had not addressed the "probabilistic dictionary" feature of the invention in sufficient detail and had therefore rectified its first decision.

1.2 In these second appeal proceedings, the appellant argued that the examining division had committed a substantial procedural violation by granting interlocutory revision under Article 109(1) EPC in relation to the appeal against the first refusal decision and then maintaining its objection of lack of inventive step against the unamended claims in its next communication. Article 109(1) EPC gave the examining division the power to rectify its decision if "the appeal is admissible and well founded" but not the right to "finesse" its previous objections at the expense of an appeal fee and three years of procedural delay.

1.3 The purpose of Article 109(1) EPC is to cut short the appeal proceedings in clear and straightforward cases in the interest of procedural efficiency, in particular when the examining division can immediately recognise that the board of appeal, taking into account the statement of grounds of appeal, would set aside the decision (see decisions G 3/03, Reasons 3.4.1; T 919/95, Reasons 2 and 2.1). This purpose is contravened if, as here, the examining division grants interlocutory revision when it still agrees with the grounds for the refusal but considers that some aspect of the decision's reasoning can be improved. In this respect, the board notes that the examining division, when granting interlocutory revision, apparently found its first decision to be sufficiently reasoned within the meaning of Rule 111(2) EPC, since it did not ex officio order the reimbursement of the appeal fee under Rule 103(1)(a) EPC.

1.4 Hence, the examining division applied Article 109(1) EPC for a purpose for which the provision is not intended and thus committed a procedural violation. In view of the considerable and unnecessary procedural delays which this has caused, the second refusal decision having been issued just over three years after the first refusal decision, the procedural violation must be considered to be a substantial one (see decision T 2707/16, Reasons 34).

2. Request for reimbursement of the appeal fee paid for the first appeal (first appeal fee)

2.1 In its decision to rectify the first refusal decision, the examining division did not order the reimbursement of the first appeal fee. At this time, no request for reimbursement of the appeal fee had been filed and consequently no such request was referred to the board. The appellant requested reimbursement of the first appeal fee for the first time during the first-instance proceedings leading to the second refusal decision.

2.2 According to decision G 3/03, OJ EPO 2005, 344, in the event of interlocutory revision under Article 109(1) EPC, the examining division is not competent to refuse a request for reimbursement of the appeal fee under Rule 67 EPC 1973 (see Order, point 1). Such a request has to be referred to the board of appeal which would have been competent under Article 21 EPC to deal with the substantive issues of the appeal if no interlocutory revision had been granted (Order, point 2; Reasons, point 3.5). These principles are now reflected in Rule 103(1)(a) and (6) EPC (see, with regard to Rule 103(2) EPC as then in force, decisions T 625/09, Reasons 1; and T 206/10, Reasons 3).

In the case underlying the referral decision leading to decision G 3/03, the request for reimbursement had been filed before interlocutory revision was granted (J 12/01, OJ EPO 2003, 431, point II of the Facts and Submissions).

2.3 In a number of later decisions, it was held that a board of appeal is not competent to decide on a request for reimbursement of the appeal fee referred to it by the examining division if the request was filed only after the examining division had granted interlocutory revision (see T 21/02, Reasons 5 and 6; T 242/05, Reasons 2.2 and 2.3; T 1703/12, Reasons 3 and 4; T 2008/14, Reasons 1). These decisions mention, inter alia, that in such cases no appeal exists for which the boards of appeal are responsible.

Decision T 21/02 added that it was the department of first instance which remained the competent body to decide on the reimbursement request (Reasons 6). The appellant could then appeal against a decision of the department of first instance refusing the request (Reasons 7).

2.4 In case T 70/08, the appellant had filed a request for reimbursement of the appeal fee after the examining division had rectified its decision. In a second refusal decision, the examining division had considered this request as "deemed not to have been filed". The board held that neither the examining division nor the board was competent to order reimbursement of the appeal fee under Rule 103(1)(a) EPC for an appeal that had been fully allowed before the request for reimbursement was filed (Reasons 7).

2.5 Decision T 893/13 also dealt with a situation in which a request for reimbursement of the appeal fee was filed after the examining division had rectified its decision. In the second refusal decision, the examining division had explained that it did not consider a substantial procedural violation to have occurred during the examination proceedings leading to the first appeal and that it was therefore unable to reimburse the appeal fee.

The deciding board took the view that, since the examining division was not competent to decide that the appeal fee should not be reimbursed, a decision granting interlocutory revision without an order for reimbursement could not be construed as a decision not to reimburse the appeal fee (Reasons 5.1 to 5.4). Since Rule 103 EPC entrusted the board with the decision on "all other matters of reimbursement", it was competent to decide on a request for reimbursement whenever the examining division revised its decision without ordering reimbursement itself, and such a request could still be validly filed after the examining division had rectified its decision (Reasons 3.3, 3.4 and 5.5).

2.6 To summarise, decision T 21/02, Reasons 6 and 7, suggests that, in the present case, the examining division was to decide on the request for reimbursement of the first appeal fee. If this approach were followed, the statement in the second refusal decision that there is no legal basis to reimburse the first appeal fee could arguably be considered to be that decision, which could now be reviewed as part of the current appeal proceedings.

Decision T 893/13 suggests, instead, that the request for reimbursement of the first appeal fee can be decided on directly by the board, essentially independently of the proceedings concerning the appeal against the second refusal decision.

Finally, decision T 70/08 suggests that the request for reimbursement of the first appeal fee cannot be dealt with at all, because it was filed after the first appeal had been fully allowed.

2.7 This board agrees with the position taken in decision T 70/08. It follows from Rule 103(1)(a) EPC that, in the event of interlocutory revision, the department of first instance has to examine whether the requirements for reimbursement of the appeal fee are met, regardless of whether the appellant has actually submitted such a request (see G 3/03, Reasons 3; T 242/05, Reasons 1.3.1). This assessment is thus to be carried out as part of the proceedings that deal with the appeal. When the appeal, in the absence of a request for reimbursement of the appeal fee, is fully allowed by the grant of interlocutory revision with the result that the appeal proceedings are terminated, the appeal, including the issue of the reimbursement of the appeal fee under Rule 103(1)(a) EPC, becomes settled. In the board's view, contrary to decision T 21/02, Reasons 6 and 7, the issue of reimbursement being a settled matter prevents it from being taken up again in response to a subsequently filed reimbursement request.

2.8 The board deciding case T 893/13 took the view that a decision granting interlocutory revision without ordering reimbursement of the appeal fee could not be considered to settle the reimbursement issue because, according to G 3/03, the decision is not supposed to adversely affect the appellant.

However, this board understands the Enlarged Board in decision G 3/03 to have used the expression "adversely affected" in the same formal sense as it is used in Article 107 EPC: a party is adversely affected by a decision only if the decision does not meet one of its requests (see decisions T 114/82 and T 115/82, OJ EPO 1983, 323, Reasons 1; T 961/00, Reasons 1). Hence, if the appellant has not requested reimbursement of the appeal fee, it is not adversely affected by a decision granting interlocutory revision and settling the reimbursement issue without ordering reimbursement.

2.9 The board notes that a different view would mean that a request for reimbursement of the appeal fee filed for the first time many years after interlocutory revision was granted would still have to be decided on in substance.

In this respect, decision T 893/13, Reasons 7, suggests that Article 13(2) of the Rules relating to Fees (RFees) ("Rights against the Organisation for the refunding ... of fees ... shall be extinguished after four years from the end of the calendar year in which the right arose") limits the possibility of filing a request for reimbursement in time. However, this provision - previously Article 126(2) EPC 1973 - relates to existing rights against, i.e. financial obligations of, the European Patent Organisation, which is the entity having the legal capacity to act in civil matters (Article 5(2) EPC). Such rights are extinguished four years from the end of the calendar year in which they arose, this period being interrupted when the creditor submits a reasoned claim in writing and, if necessary, initiates (national) judicial proceedings to enforce the right (Article 13(3) RFees). In the case of reimbursement of the appeal fee under Rule 103(1)(a) EPC, such a right against the Organisation only arises when, and not before, the department of first instance or the board of appeal orders the reimbursement; within a national legal system the existence of the right can be established only by ascertaining whether such an order has been given, not by determining whether reimbursement is equitable by reason of a substantial procedural violation. Hence, Article 13(2) RFees does not set a time limit for filing a request for reimbursement of the appeal fee under Rule 103(1)(a) EPC.

2.10 The appellant argued that the examining division's rectification decision was an interlocutory decision not allowing a separate appeal, which could therefore be appealed together with the second refusal decision (Article 106(2) EPC).

This argument overlooks the fact that the rectification decision was not an interlocutory decision but terminated the first appeal proceedings. Besides, the appellant could not have appealed the rectification decision since the decision did not adversely affect it by not meeting one of its requests.

2.11 The board concludes that it is not competent to deal with the request for reimbursement of the first appeal fee, which therefore has to be rejected.

3. Request for reimbursement of the appeal fee paid for the second appeal (second appeal fee)

3.1 In view of point 2. above, the appellant was no longer able to request reimbursement of the first appeal fee when it became aware that the examining division might have committed a substantial procedural violation by granting interlocutory revision. To prevent the appellant from being deprived of the possibility to assert its rights under Rule 103(1)(a) EPC, the board considers therefore that the substantial procedural violation in the decision to grant interlocutory revision may justify the reimbursement of the second appeal fee.

3.2 That it is appropriate to link a substantial procedural violation committed in a decision granting interlocutory revision to a potential reimbursement under Rule 103(1)(a) EPC of the appeal fee paid for a subsequent appeal is further confirmed by the observation that the equitability of the reimbursement of an appeal fee in such a case depends on the outcome of the further first-instance proceedings. For example, if they result in the grant of a patent without a second appeal being necessary, there would be nothing inequitable about the non-reimbursement of the first appeal fee.

The board further notes that, in point 1.4 above, it has already based its judgment that the procedural violation in the decision to grant interlocutory revision is a substantial one on the length of the further first-instance proceedings. Thus, whether the procedural violation is substantial may also depend on what happens in the subsequent proceedings.

3.3 In the present case, the reimbursement of the second appeal fee is equitable. If the examining division had not granted interlocutory revision, there would have been no second appeal against what is essentially a copy of the first refusal decision (see also decision T 252/91, Reasons 5, last two paragraphs, in which the second appeal fee was reimbursed in similar circumstances).

3.4 However, under Rule 103(1)(a) EPC the board cannot order the reimbursement of the second appeal fee if it does not allow this second appeal. This shows that a fully equitable solution in a situation such as the present one may not always be achievable.

3.5 As a rule, a fundamental deficiency which is apparent in the first-instance proceedings constitutes a special reason for remitting the case to the department of first instance for further prosecution (Article 11 RPBA 2020) and consequently allowing the appeal. In the circumstances of this case, however, it is not an option to remit the case before the board has at least examined the main request, which was the subject of both refusal decisions.