T 2381/19 - Reject, appeal, revise, repeat

Key points

• The grant of interlocutory revision in an appeal against a refusal does not mean that the patent is granted. In the present case, the applicant accordingly had to file two appeal fees before having its application considered by the Board.
• In this case, the applicant requested reimbursement of the appeal fee. The Board found the claims to be not allowable, so the Board's extensive analysis of the point seems obiter.
• "In the present case the examining division granted interlocutory revision by a separate decision dated 26 November 2018. This decision did not revise the decision in the sense of immediately replacing it with a decision dealing with the substantive issues, but only set the decision aside and continued the examination proceedings ("cassatory revision", cf. J 5/08 (point 19 of the Reasons), T 0919/95 (point 2 of the Reasons, last paragraph), both cited in the "Case Law of the Boards of Appeal of the EPO" [CLBA], 10**(th) edition, 2022, section V.A.2.9.5). In its second decision refusing the application, the division added additional objections (under Articles 123(2), 84, 52(1) and 56 EPC), although the requests remained unchanged. This is not recommended by the Guidelines, but is possible (Guidelines E-XII, 7.4.1, version of November 2018). In this case, the Guidelines provide that the Examining Division should order the reimbursement of one appeal fee if a substantial procedural violation occurred (Guidelines E-XII, 7.4.1). However, this was not the case here and no reimbursement was ordered. The appellant also did not argue in its first appeal that a substantial procedural violation occurred in the procedure leading to the issuance of the first refusal. It also did not argue in its second appeal that not reimbursing the first appeal fee in the interlocutory decision in itself constituted a procedural violation."
• "the Guidelines recommend that if the requests remain unchanged - as in the present case - and the objections that led to the refusal are upheld (in the present case the objections under Article 123(2) EPC), the examining division should refer the appeal to the Boards of Appeal within three months (Guidelines E-XII, 7.4.1)."
• Without checking the file wrapper in detail, an essential point of interlocutory revision in general seems to me to be that the objections supporting the original refusal decision are abandoned by the Examining Division in the interlocutory revision. Interlocutory revision is not an opportunity to tidy up (the written reasons for) the refusal decision at the expense of the applicant. Raising new objections would be possible, but repeating the same objections again seems unfair as the applicant is then prevented from obtaining a review of those objections by the Board. 
• Incidentally, the USPTO practice on point seems undesirable to me. 
• The Board does comment on this issue: "once the examining division reopens the examination, it is formally not prevented from re-examining all the issues which were already the subject of the previous decision. The principle of prohibition of reformatio in peius does not apply in this situation.[*] As explained above, the decision whether or not to allow interlocutory revision must be taken by the examining division relatively expeditiously and only on the basis of the first decision and the appeal against it. However, once the substantive examination of the application is reopened, the ensuing in-depth examination of the case with respect to other patentability requirements may well reveal that the problems under Article 123(2) EPC are still not resolved, as the present proceedings before the board have shown. It is therefore certainly undesirable, but not excluded, that the same issues are raised again in a second decision of the examining division." 
• [*] Comment: the fact that the prohibition of reformatio in peius does not apply does not exclude that there is no other procedural principle objecting to such an approach to Art.109
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• EPO 

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

https://new.epo.org/en/boards-of-appeal/decisions/t192381eu1.html

5. Procedural violation - reimbursement of the appeal fee

5.1 According to Rule 103(1)(a) EPC, the reimbursement of an appeal fee is to be ordered if the following conditions are fulfilled:

(i) where the board of appeal deems an appeal to be allowable; and

(ii) if such reimbursement is equitable by reason of a substantial procedural violation.

5.2 The appellant argues that the "misuse of the rectification procedure by the Examining Division to add further objections to their first Decision while maintaining the added-matter objection is considered a substantial procedural violation which justifies the reimbursement of the appeal fee" (page 5, last paragraph in the statement setting out the grounds of appeal). The appellant also submits that by not forwarding the appeal to the Boards of Appeal the procedure in the first instance was extended by one year with the result that the application was refused a second time (inter alia with the same reasoning) and the appellant had to pay a second appeal fee.

5.3 However, the appellant did not explain specifically which legal provisions of the EPC or possibly which instructions of the Guidelines have been violated and how, beyond stating a misuse of the possibility of an interlocutory revision under Article 109 EPC.

5.4 The board can agree with the appellant that it is not desirable and might even appear generally inequitable if an applicant were forced to pay multiple appeal fees for the examination leading to the same or similar refusal grounds. This can, at least theoretically, lead to an effective perpetuation of the examination procedure, without ever giving the applicant the chance to have its case examined by a Board of Appeal, while forcing it to pay multiple appeal fees. However, the necessity to file repeated appeals and to pay multiple appeal fees may arise also without a substantial procedural violation, as demonstrated by the present case.

5.5 The purpose of Article 109 EPC is that the examining divisions can correct their own decisions in case of an appeal, so that the case does not have to be prolonged by a full and proper appeal procedure where the appeal appears manifestly allowable, e.g. if requests or facts have not been taken into account, and a remittal would be expected following the appeal (see also T 0919/95, point 2 of the Reasons, referring to the preparatory works of the EPC: "The purpose of this provision is to shorten the appeal procedure in clear cases and not to refer these issues to the Board of Appeal with its complicated procedure at all").

5.6 In the present case the examining division granted interlocutory revision by a separate decision dated 26 November 2018. This decision did not revise the decision in the sense of immediately replacing it with a decision dealing with the substantive issues, but only set the decision aside and continued the examination proceedings ("cassatory revision", cf. J 5/08 (point 19 of the Reasons), T 0919/95 (point 2 of the Reasons, last paragraph), both cited in the "Case Law of the Boards of Appeal of the EPO" [CLBA], 10**(th) edition, 2022, section V.A.2.9.5). In its second decision refusing the application, the division added additional objections (under Articles 123(2), 84, 52(1) and 56 EPC), although the requests remained unchanged. This is not recommended by the Guidelines, but is possible (Guidelines E-XII, 7.4.1, version of November 2018). In this case, the Guidelines provide that the Examining Division should order the reimbursement of one appeal fee if a substantial procedural violation occurred (Guidelines E-XII, 7.4.1). However, this was not the case here and no reimbursement was ordered. The appellant also did not argue in its first appeal that a substantial procedural violation occurred in the procedure leading to the issuance of the first refusal. It also did not argue in its second appeal that not reimbursing the first appeal fee in the interlocutory decision in itself constituted a procedural violation.

5.7 Furthermore, the Guidelines recommend that if the requests remain unchanged - as in the present case - and the objections that led to the refusal are upheld (in the present case the objections under Article 123(2) EPC), the examining division should refer the appeal to the Boards of Appeal within three months (Guidelines E-XII, 7.4.1).

5.8 However, as the appellant also observes, these parts of the Guidelines also state that if the applicant "has filed an appeal but no amended claims, the division checks whether the decision was correct in substance. Interlocutory revision is only allowed if the decision was not correct in substance. ... If interlocutory revision is made and new objections arise, the division communicates these objections to the applicant as often as necessary to reach a final decision on the file; this could include holding oral proceedings (again) and/or a second refusal" (board's emphasis), see version of November 2018, E-XII, 7.4.1.

5.9 As noted above in point 5.6, the appellant did not argue and the board does not see that the refusal of the application in the first decision was tainted with a procedural violation so serious that it may have justified the refund of the (first) appeal fee. Giving one single ground for the refusal, presently a violation of Article 123(2) EPC, may not be procedurally optimal, but is in itself not a procedural violation. Depending on the subject-matter claimed, it can be a defendable procedure to refrain from examining certain substantive issues, such as inventive step and novelty, as long as the division is not convinced that the potential distinguishing features have a proper basis under Article 123(2) EPC. An erroneous assessment of a substantive issue by the division is not a substantial procedural violation, either. In sum, there was no basis for the ordering of the reimbursement of the (first) appeal fee in the decision allowing the interlocutory revision (see point 5.6 above).

5.10 So the question remains if there are good reasons for the reimbursement of the second appeal fee, that is the fee for the present appeal. The possibility for reimbursing an appeal fee under Rule 103(1)(a) EPC serves the purpose of compensating an appellant who had to file an appeal unnecessarily due to a substantial procedural violation committed by the first instance.

5.11 In order to establish such a substantial procedural violation in connection with the second appeal, the board must be convinced that the procedure following the first appeal was tainted with some serious error, and the division ought have conducted the procedure differently under any circumstances.

5.12 Such a serious error in the procedure leading to the second refusal decision is also not apparent. It is not clear to the board how the examining division could have proceeded differently following the grant of the interlocutory revision and the rectification of the first refusal decision. As explained above in point 5.8, the Guidelines do not prohibit the raising of new objections even where the requests remain the same. This happened in the present case and the division not only maintained and possibly repeated the objections under Article 123(2) EPC, but also raised in particular inventive step objections. In view of these objections, the applicant could not have reasonably expected the grant of the patent without a further refusal following the decision to grant the interlocutory revision. Put differently, already these additional inventive step objections made the payment of the further appeal fee necessary.

5.13 The board notes that the applicant may not have been able to avoid paying the second appeal fee in all circumstances. Even assuming for the sake of argument that the division would not have allowed the interlocutory revision and instead would have referred the first appeal to the Board of Appeal under Article 109(2) EPC, the payment of a second appeal fee might still have become unavoidable. Since the first refusal decision only dealt with added subject-matter, it would still have been quite likely that the case would have been remitted to the examining division for examination of the outstanding substantive issues even after a successful (first) appeal. This, in turn, would have led to a second decision which would have had essentially the same outcome as the decision underlying the second appeal (at least on the issue of inventive step, even assuming that all Article 123(2) EPC issues had been resolved before the board), with the difference that the procedure would have taken even longer to arrive at this second refusal and, consequently, at the second appeal.

5.14 Finally, the board points out that the appellant's conduct of the proceedings leading to the first refusing decision does not appear to have made the proceedings more efficient. There the applicant requested oral proceedings, and stated later that such oral proceedings were actually not preferred, but were not withdrawn either. Only one day before the oral proceedings did the applicant inform the examining division that they would not attend. Had the applicant appeared, they might possibly have overcome the single Article 123(2) EPC objection, which might have avoided the issuance of the first refusal decision altogether.

5.15 This opinion of the board concerning the procedural violation committed by the examining division, was already part of the preliminary opinion of the board pursuant to Article 15(1) RPBA, dated 20 January 2023 (essentially verbatim as set out in points 5.3 to 5.14 above). The appellant did not refute the majority of these findings of the Board at the oral proceedings, but still argued that the reimbursement was equitable, on the basis of arguments as set out above in point X, sections (b)-(d) of the facts and submissions.

5.16 These arguments are not considered to be convincing. Firstly, there is no basis for the appellant's argument that it had a legitimate expectation that the examining division's decision to allow the appeal under Article 109(1) EPC should inevitably have been followed by a decision to grant the patent. This cannot be inferred from the plain wording of Article 109(1) EPC, which requires only a decision by the examining division as to whether or not the appeal is likely to succeed. This is a different and much more limited matter than the decision on the final grant of the patent, for which all the requirements of the EPC have to be examined. It also follows from the provisions of Article 109(2) EPC that even the positive decision of the division to allow the appeal must be taken within the time limit of three months specified in that article. All these factors point to an examination procedure which, at most, allows examination of the issues raised in the appeal, but cannot guarantee that the full examination required for a grant decision will also be carried out. On the other hand, it is generally in the interest of the applicant that unresolved issues are addressed before the second appealable decision is issued by the examining division, if the division considers such additional issues to be relevant. It therefore remains the case that the proceedings may well continue with a second decision still refusing the application. See also T 0919/95, point 2.2 of the Reasons, second paragraph: "An interlocutory decision setting aside the contested decision is in itself only a preparatory measure for the final decision on grant of the patent, to be taken within the - short - period specified in Article 109(2) EPC, which, if it does not yet contain a clear indication in the sense of a grant, cannot be regarded as such and thus does not give rise to any protection of legitimate expectations pointing to a positive decision".

5.17 The above considerations also explain why, in the procedure under Article 109 EPC, it is not excluded that the decision may be set aside (implying that it has been found to be wrong on the merits) and a second decision may be issued reopening an issue that has already been decided. If the examining division considers that the appeal is likely to succeed but that the patent cannot be granted on the basis of the claims in the file - simply because all the requirements of the EPC have not yet been fully examined, so that neither a positive nor a negative decision is foreseeable - it has practically no choice but to set aside the decision. Otherwise, there would be no legal basis for the examining division to issue further communications and to summon the applicant to oral proceedings in order to continue the examination. The pending appeal would not only suspend the legal effects of the impugned decision (Article 106(1), second sentence, EPC), but would also deprive the division of its usual powers, since with the appeal these powers are automatically transferred to the board dealing with the appeal as soon as it receives the appeal (devolutive effect of the appeal, see CLBA, section V.A.1.4).

5.18 However, once the examining division reopens the examination, it is formally not prevented from re-examining all the issues which were already the subject of the previous decision. The principle of prohibition of reformatio in peius does not apply in this situation. As explained above, the decision whether or not to allow interlocutory revision must be taken by the examining division relatively expeditiously and only on the basis of the first decision and the appeal against it. However, once the substantive examination of the application is reopened, the ensuing in-depth examination of the case with respect to other patentability requirements may well reveal that the problems under Article 123(2) EPC are still not resolved, as the present proceedings before the board have shown. It is therefore certainly undesirable, but not excluded, that the same issues are raised again in a second decision of the examining division.

5.19 Finally, the board does not dispute that the proceedings could also have been terminated earlier and that the appellant could indeed have decided not to pursue the appeal already after the first appeal proceedings. The board understands this argument as an attempt to show that the appellant would not have had to pay two appeal fees under any circumstances. However, it is not possible to draw the inverse conclusion from this fact, namely that the necessity to pay a second appeal fee is already an indication of a substantial procedural violation, when this might not have been necessary in the circumstances of the underlying case, assuming certain possible, but still hypothetical, outcomes of the case. As the board has explained in point 5.13 above, the payment of the second appeal fee may also have occurred on the basis of what the appellant considered to be a correct procedure under the Guidelines.

5.20 Consequently, the board holds that there is no basis for the reimbursement of the second appeal fee, as no procedural violation is apparent and a reimbursement also does not appear equitable for other reasons. The question of whether reimbursement would be possible in view of the requirement of a successful appeal on the merits (Rule 103(1)(a) EPC: "..., where the Board of Appeal deems an appeal to be allowable, ..."), but also in view of the relatively unusual procedural situation of the two successive appeals, which form the core of the request for reimbursement, can be left unanswered.

6. Conclusions

6.1 Since the subject-matter of respective claim 1 of the main request and 1**(st) to 4**(th) auxiliary requests extends beyond the subject-matter originally filed, the examining division's decision refusing the application is confirmed. Consequently, the appeal has to be dismissed (Articles 97(2) and 111(1) EPC).

6.2 The board could not identify a substantial procedural violation neither for the first nor for the second decision of the examining division. Consequently, the request for the reimbursement of the appeal fee must be refused (Rule 103(1)(a) EPC).