J 0003/24 - Late FP request granted

Key points

• "The present application EP 22 155 454.6 was filed on 7 February 2022. The examination and designation fees were due on 10 February 2023 (Friday). These fees were paid on Monday 13 February 2023. By letter of 12 February 2023, the appellant's representative requested that the payment be considered as being on time, as he had assumed that he had given an automatic debit order at the time of taking over representation from the previous representative, but on checking the deposit account on 12 February 2023 it turned out that this was not the case."
• Note, 'due' is here not used in the EPC sense of the first day a fee can be paid validly (Visser's Annotated EPC, 2024, page 855). 
• The Receiving Section allowed the appeal. As the decision is not reasoned, we don't know why.
• "On 21 February 2023, a notification of loss of rights pursuant to Rule 112(1) EPC was sent undated, and was sent again on 7 March 2023, informing the appellant that the application was deemed to be withdrawn because the examination fee and the designation fee had been paid after expiry of the prescribed period for payment. The notification indicated as available means of redress a request for a decision under Rule 112(2) EPC, a request for further processing under Article 121 EPC and a request to consider the fee to have been paid in due time under Article 7(3), (4) Rules relating to Fees (RFees), each with a two-month time limit for filing. 
• IV. On 1 June 2023, the appellant submitted an enquiry regarding his request of 12 February 2023."
• " By a communication of 22 June 2023, the appellant was informed that no valid request for further processing had been filed as the relevant fee had not been paid in due time. "
• "By letter of 29 June 2023, the appellant reiterated his request that the payment of the fees be considered as having been made in time. He explained that he had not interpreted the notification of loss of rights as a reaction to his request filed on 12 February 2023, but as an automatically generated letter. As an auxiliary request he claimed further processing and requested that the required fees be debited from his deposit account."
• Interestingly enough, for some reason, the FP request of 29 June 2023 was apparently granted in appeal by the Receiving Section by interlocutory revision.
• The Legal Board: " In the present case, it must be conceded to the appellant that the notification of loss of rights of 21 February / 7 March 2023 according to Rule 112 EPC made reference to the late payment but did not expressly address the appellant's request of 12 February 2023 for the late payment to be considered as having been made on time. From an objective point of view, it was therefore not clearly apparent whether the Receiving Section had taken this request into account in its communication.
However, on an objective basis and under the present circumstances, it was not reasonable for the appellant to completely disregard this communication. Even if the appellant's representative had considered the notification as having been generated automatically without taking into account the request of 12 February 2023, it is expected that communications from the European Patent Office will be observed. The present notification pointed out the legal remedies available to overcome the loss of rights caused by the late payment of the examination and designation fees and, in particular, indicated the time limit for filing a request for further processing (Article 121 EPC, Rule 135(1) EPC). Such an official communication cannot simply be ignored and set aside. Rather, it was the appellant's own responsibility to enquire about the situation regarding his request of 12 February 2023 before expiry of the triggered time limits in order to ensure that he did not suffer any loss of rights. The fact that he only contacted the Receiving Section on 1 June 2023 must be attributed solely to the appellant."
The appellant could also have requested a decision under Rule 112 on whether the notice of loss of rights was correct; suitably with an auxiliary request for further processing.
• However, the Receiving Section granted the FP request in interlocutory revision, and that decision stands. 
• The request for reimbursement of the appeal fee is rejected.

•  

 

 

 

EPO 

The link to the decision and an extract of it can be found after the jump.

T 2285/19 - Interlocutory revision

Key points

• The applicant appeals against the refusal of the patent application. The Board concludes that: " the amendments to the claims of the main request clearly overcome the sole objection raised by the examining division against claims 1 and 6 of auxiliary request 2 on which the decision under appeal was based." 
• The Board concludes that the ED should have granted interlocutory revision: "An appeal is to be considered well founded within the meaning of Article 109(1) EPC 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. Other objections which may arise in the main request but which were not the subject of the contested decision cannot preclude the application of Article 109(1) EPC". 
• Note that admissibility under Art.12 RPBA is not mentioned as a factor for Art.109 EPC. See T 0682/22.
• "  In view of the board's findings in point 2. above, the examining division could reasonably have been expected to recognise that the amendments made to the claims of the current main request overcame the sole ground for refusing then auxiliary request 2, and should have rectified its decision." 
• The Board does not conclude that this is a substantial procedural violation. This conclusion aligns with T 1060/13 and T 0682/22. 
• The Board remits the case and refunds the appeal fee at 25% because the request for oral proceedings was withdrawn in time (the withdrawal was conditional on the remittal). 

EPO 

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

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
• 
  
• EPO 

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

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.

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.

T 0657/17 - Interlocutory revision going wrong

Key points

• In this case, the application was refused on 03.08.2016. The applicant files an appeal. On 14.03.2017, the Examining Division filled in and signed a Form 2701 granting interlocutory revision; the applicant was informed accordingly. At the same time, "the case was referred to the Board of Appeal for a decision on a request for reimbursement of the appeal fee after rectification of the appeal". However, the applicant had not requested a refund of the appeal fee.
• " According to decision G 3/03, the issue of reimbursement of the appeal fee should therefore not have been referred to the Board for decision (see point 2 above)." 
• The ED had not taken any action after 2017. 
• The Board "A second copy of Form 2701 is on file which appears to be intended to retract the examining division's decision of 14 March 2017 rectifying its decision of 3 August 2016 and to replace it by an order stating that the decision under appeal is not rectified. It is not clear, when and by whom the initial order to rectify the decision dated 3 August 2016 was amended, since this was simply done by crossing out the order granting rectification on the original Form 2701 signed by the examiners." 
• " There is no evidence on file that the appellants had previously been informed of a retraction by the examining division of its decision granting interlocutory revision pursuant to Article 109(1) EPC. As from 31 March 2017 at the latest, the decision ordering rectification could no longer be amended. Therefore, the Board holds that the appeal was allowed by the examining division in accordance with Article 109(1) EPC and duly notified to the appellants. Consequently, there is no appeal pending before the Board." 
• The Board's order is that the case is remitted to the OD.

EPO T 0657/17 - link

Summary of Facts and Submissions

I. European patent application 03 729 689.4 was refused by the examining division by decision posted on 3 August 2016. On 16 September 2016, a notice of appeal was filed and the appeal fee was paid on the same day. On 13 December 2016, the appellants filed the statement setting out the grounds of appeal and requested that a patent be granted on the basis of an amended set of claims filed therewith. No request for reimbursement of the appeal fee was filed.

II. On 14 March 2017, the examining division rectified the decision under appeal by crossing the respective box on the internal (non-public) Form 2701. This was communicated to the appellants on 21 March 2017, by the use of Form 2710, which stated that following the appeal of 16 September 2016, rectification was ordered and the decision dated 3 August 2016 was set aside. The appellants were also informed that their request for reimbursement of the appeal fee could not be allowed and that this request would be forwarded to the Board of Appeal for decision.

III. On 14 March 2017, the case was referred to the Board of Appeal for a decision on a request for reimbursement of the appeal fee after rectification of the appeal.

Reasons for the Decision

1. As an exception to the devolutive effect of an appeal and in the interest of procedural expediency and economy, Article 109(1) EPC provides that the department of the first instance which rendered the decision under appeal has to rectify its decision, i.e. to grant interlocutory revision, if it considers the appeal to be admissible and well-founded, and the appellant is not opposed by another party. According to G 3/03, in case of interlocutory revision the decision under appeal is set aside and the appeal allowed by the department of the first instance. As a consequence, the appeal is no longer pending and will not be remitted to a board of appeal unless reimbursement of the appeal fee is contentious (G 3/03, OJ EPO 2005, 344, point 2).

2. In G 3/03 the Enlarged Board further stated that it followed from the wording of Rule 67 EPC 1973 (now Rule 103(1)(a) EPC) that the department of the first instance had to examine whether the requirements for reimbursement of the appeal fee were met, regardless of whether or not the appellant had actually submitted such a request. If the department of the first instance came to the conclusion that these requirements were not met, it could not order reimbursement of the appeal fee. In the absence of a request for reimbursement of the appeal fee, the decision of the department of the first instance granting interlocutory revision pursuant to Article 109(1) EPC would make no mention of the issue of reimbursement of the appeal fee, and the appellant would not be adversely affected by the decision (G 3/03, OJ EPO 2005, 344, point 3).

3. In the present case, the examining division rectified its decision dated 3 August 2016 on 14 March 2017. On the same day, the decision ordering rectification was handed over to the EPO postal service for notification (see date in the footer of Form 2710) and the matter referred to the Board for a decision on a request for reimbursement of the appeal fee (see internal Form 2703). Form 2710 informing the appellants of the rectification was dispatched on 21 March 2017.

4. A second copy of Form 2701 is on file which appears to be intended to retract the examining division's decision of 14 March 2017 rectifying its decision of 3 August 2016 and to replace it by an order stating that the decision under appeal is not rectified. It is not clear, when and by whom the initial order to rectify the decision dated 3 August 2016 was amended, since this was simply done by crossing out the order granting rectification on the original Form 2701 signed by the examiners.

5. However, it is not necessary to assess whether and, if so, until when the examination division could have reversed its decision of 14 March 2017 rectifying the decision of 3 August 2016, and whether the second Form 2701 was legally effective. The examining division's rectification of the decision of 3 August 2016 was notified, by the use of Form 2710, to the appellants on 31 March 2017 (Rule 126(2) EPC). There is no evidence on file that the appellants had previously been informed of a retraction by the examining division of its decision granting interlocutory revision pursuant to Article 109(1) EPC. As from 31 March 2017 at the latest, the decision ordering rectification could no longer be amended. Therefore, the Board holds that the appeal was allowed by the examining division in accordance with Article 109(1) EPC and duly notified to the appellants. Consequently, there is no appeal pending before the Board.

6. Furthermore, the Board notes that reimbursement of the appeal fee was not requested on appeal. According to decision G 3/03, the issue of reimbursement of the appeal fee should therefore not have been referred to the Board for decision (see point 2 above). In any case, in the absence of a request for reimbursement of the appeal fee, this matter does not constitute an ancillary issue to be dealt with in appeal proceedings (see T 242/05 of 20 September 2006, point 2.3, and T 2134/12 of 16 July 2013, point 3).

7. In view of the above, the Board holds that no appeal exists in respect of European patent application 03 729 689.4 for which the Board is responsible pursuant to Article 21(1) EPC. Moreover, in the absence of a request for reimbursement of the appeal fee (Rule 103(1)(a) EPC), the Board is also not empowered to decide on this issue as an ancillary matter. Since no appeal is pending, the Board can only remit the case which was erroneously referred to it, to the department of first instance (following decisions T 21/02 of 20 February 2006, T 242/05 of 20 September 2006, T 1703/12 of 14 March 2013, and T 2134/12 of 16 July 2013).

Order

For these reasons it is decided that:

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

T 1558/18 - More than you want in opposition

Key points

• Before the OD, the patentee had filed amended claims as sole request. The two opponents then withdrew their oppositions. The OD then decided to terminate the opposition proceedings under Rule 84(2) EPC, thereby leaving the patent unamended. The patentee appeals.
• The Board finds that there is a substantial procedural violation because the decision violates Article 113(2) EPC. The Board also points out that interlocutory revision under Article 109 should have been granted because the opposition proceedings are now ex parte. 

EPO T 1558/18 -  link

Entscheidungsgründe

1. Antragsbindung (ne ultra petita) - Artikel 113 (2) EPÜ

Die Beschwerdeführerin beantragte im Einspruchsverfahren die Aufrechterhaltung des Patents in geänderter Fassung auf Basis eines mit dem Schriftsatz vom 19. Mai 2017 eingereichten neuen Anspruchsatzes. Dieser galt als einziger Antrag und wurde mit dem Schriftsatz vom 23. April 2018 durch die Einreichung einer angepassten Beschreibung nochmals bestätigt.

Die Aufrechterhaltung des Streitpatents in unveränderter Fassung war somit von der Beschwerdeführerin vor der Entscheidung der Einspruchsabteilung vom 2. Mai 2018 zweifelsfrei nicht mehr beantragt.

T 0683/14 - Appeal decision without appeal

Key points

• The decision was taken by the Board in extended composition with five members.
• In this examination appeal, interlocutory revision was granted but the request for refund of the appeal fee was refused. Hence, this request is forwarded to the Board. The Board issues summons. The applicant withdraws the appeal and requests a 50% refund under (relatively new) Rule 103(2)(a) EPC.
• The Board refuses the 50% refund. The reason is that there was no appeal to be withdrawn.
• " The board notes that the examining division rectified the decision under appeal pursuant to Article 109(1) EPC. [...] This means that the examining division set the decision under appeal aside and allowed the appeal. The appeal was not remitted and has thus never been pending before the board. [...] In the absence of a pending appeal that might be withdrawn, Rule 103(2) EPC does not apply."
• The Board also decides on the request for 100% refund based on an alleged procedural violation.
• The facts are as follows. Oral proceedings were held before the OD, no decision was announced. A Rule 71(3) intention to grant based on auxiliary request was issued. In response, the applicant filed new claims and a new document, namely a declaration evidencing that an alleged prior art document was confidential. The ED then issued the refusal decision, which also stated that the new evidence was disregarded.
• The Board finds that the ED erred by acting in this way. Even if the debate was closed at the end of the oral proceedings, no formal decision was taken, and the debate may be re-opened. The Board cites T 595/90 and finds that it applies by analogy to EPO departments of first instance. The quote of T95/90 is " ... the closing of the debate ... normally terminates the possibility of [making] further submissions. Observations submitted thereafter could only be taken into account if the Board reopened the debate (Article 113 EPC) which depends on its discretion." 
• However, the Board labels this as an error "of a substantive nature" 
• " In so proceeding, the examining division implemented its erroneous position that the confidentiality document submitted on 1 August 2013 could not be taken into account because the debate had been closed and a "decision" had been taken during the oral proceedings of 10 December 2012. This error was of a substantive nature, and the procedural consequences thereof, i.e. in particular the adopting of a decision directly, without considering resuming examination, on the basis of the confidentiality document, were caused exclusively by the implementation of the erroneous substantive position." 
• As a comment, this means that if an Examining Division applies Article 113 erroneously (see the cited decision T 595/90) based on an incorrect understanding of case law, this is not a procedural violation according to this Board. I find this difficult to understand. Does the Board mean that a violation of the right to be heard based on a mistaken view on the case law or the meaning of Article 113 EPC is not a procedural violation? 
  
  
• As a further comment, I note that the Board decides on the part of the appeal relating to the request for 100% refund while simultaneously finding that there was no appeal at all. Clearly, had the applicant not filed a notice of appeal, there would have been no decision on this point by the Board. So here we have a decision of the  Board, resulting from a Notice of appeal, but were an appeal "never [has] been pending before the board". I don't find this persuasive. Clearly, granting the 50% refund would have opened a loophole in Rule 103 in case of interlocutory revision (Rule 103 appears to assume that the negative impugned decision is accepted by the appellant rather than overturned by interlocutory revision). However, that loophole can easily be remedied by amending Rule 103(2) EPC.
• Note 02.02.2024: As properly seen, only the request for reimbursement is forwarded to the Board, not the appeal. See e.g. T 1216/23.
• The actual reasoning of the Board merely refers to the Board's preliminary opinion. This makes the decision difficult to read.

EPO T 0683/14 -  link

Summary of Facts and Submissions

I. The then applicants, now patent proprietors, had filed an appeal against the decision of the examining division refusing European patent application number 10 153 812.2. The examining division, enlarged by a legal member, rectified the decision under appeal pursuant to Article 109(1) EPC. The corresponding Form 2710 was dispatched on 25 March 2014.

The examining division did not allow the request for reimbursement of the appeal fee made in the statement of grounds of appeal. As a consequence, the case was referred to the board pursuant to Rule 103(2) (now 103(3)) EPC. The present decision deals with this sole pending request.

II. The board issued a summons to oral proceedings. In a communication attached thereto it expressed its provisional and non-binding view that, in the absence of a procedural violation, the appeal fee could not be reimbursed under Rule 103(1)(a) EPC. The communication is, in essential part, reproduced verbatim below.

[beginning of reproduction]

B. The grounds relating to the request for reimbursement of the appeal fee

1. In their statement setting out the grounds of appeal, the (former) appellants submit that, with the decision of 2 October 2013, the examining division refused the application in issue without having considered new evidence and without having issued a communication prior to the refusal. This constituted a clear violation of the "established procedural steps of the EPO". Accordingly, the appellants request reimbursement of the appeal fee.

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.

T 2536/17 - Commenting on admissibility

Key points

• In this examination appeal, the ED had allowed interlocutory revision, but had refused the requested reimbursement of the appeal fee. So, the Board decides on the reimbursement. The Board orders the reimbursement because of a substantial procedural violation.
• After an Rule 71(3) Communication, the applicant had filed amended claims under Rule 71(6). The ED did not admit these requests under Rule 137(3), and refused the application.
• The Board finds this a substantial procedural violation. The  ED should have given the applicant the opportunity to comment on the reasons for not admitting the filed requests, so as to not violate Article 113 EPC. 

EPO T 2536/17 -  link

Sachverhalt und Anträge

III. Im Rahmen des Prüfungsverfahrens hatte die Prüfungsabteilung am 20. Januar 2017 eine Mitteilung nach Regel 71 (3) EPÜ auf der Grundlage des Hilfsantrags II vom 18. Februar 2016 erlassen. Die Gründe der Ablehnung des Hauptantrags und des Hilfsantrags I wurden angegeben.

Mit Eingabe vom 19. Mai 2017 beantragte die Anmelderin Änderungen gemäß Regel 71 (6) EPÜ und reichte einen geänderten Hauptantrag und Hilfsanträge I bis IV ein. Auf Seite 2 dieser Eingabe wurde unter anderem folgendes angegeben: [...]

Daraufhin beschloss die Prüfungsabteilung die Zurückweisung der Anmeldung mit Entscheidung vom 20. Juli 2017. Die Prüfungsabteilung erachtete alle am 19. Mai 2017 eingereichten Anträge gemäß Regel 137 (3) EPÜ als formal nicht zulässig, einschließlich des Hilfsantrags IV, der dem Hilfsantrag II, auf der die Mitteilung nach Regel 71 (3) EPÜ basierte, entsprach. Für die Prüfungsabteilung eröffnete die Einreichung fünf neuer, einen anderen Schutzumfang definierender Anspruchssätze eine völlig neue Diskussion und stellte die Ergebnisse des bisherigen Verfahrens infrage.

Weiterhin wurde folgendes ausgeführt: "Da keine Einigung auf eine zu erteilende Fassung erzielt wurde und auch nicht mehr erzielt werden kann (Art. 113 (2) EPÜ), da der Anmelder die Erteilung des Hilfsantrags II vom 18. Februar 2016 abgelehnt hat und neue Anträge nach [sic] nicht mehr zulässig sind (R. 137(3) EPÜ), wird die Anmeldung gemäss RL C-V, 4.7.3 i.V.m. Art. 97(2) EPÜ zurückgewiesen."

Gegen diese Entscheidung richtete sich die Beschwerde, der abgeholfen wurde. In der Beschwerdebegründung machte die Beschwerdeführerin bezüglich der Rückzahlung der Beschwerdegebühr geltend, dass von der Prüfungsabteilung übersehen wurde, dass mit dem Hilfsantrag IV hilfsweise eine Erteilung auf der Basis der Regel 71 (3) EPÜ-Mitteilung vom 20. Januar 2017 beantragt wurde. Daher sei die Zurückweisung nicht gerechtfertigt. Das Übersehen des Hilfsantrags IV sei ein Verfahrensmangel, der den Antrag auf Rückzahlung der Beschwerdegebühr rechtfertige. [...]

Entscheidungsgründe

1. Die Prüfungsabteilung hat der Beschwerde abgeholfen. Die vorliegende Entscheidung betrifft ausschließlich den Antrag auf Rückstattung der Beschwerdegebühr, dem die Prüfungsabteilung in ihrer Abhilfeentscheidung nicht stattgegeben hat.

2. Der Antrag auf Rückzahlung der Beschwerdegebühr ist zulässig.

Er wurde aufgrund von Regel 103 (1) EPÜ zusammen mit der Beschwerde gestellt, noch bevor der Beschwerde in der Sache abgeholfen wurde (vgl. T 242/05 vom 20. September 2006). Da im Rahmen der Abhilfeentscheidung die beantragte Rückzahlung der Beschwerdegebühr nicht gewährt wurde, ist zur Entscheidung die Beschwerdekammer zuständig, die über die Beschwerde in der Sache zu entscheiden gehabt hätte (Regel 103 (3) Satz 2 EPÜ; G 3/03, ABl. EPA 2005, 344, Nr. 5 der Entscheidungsgründe), hier also die Technische Beschwerdekammer 3.2.01.

3. Der Antrag ist auch begründet.

Gemäß Regel 103 (1) a) EPÜ wird die Rückzahlung der Beschwerdegebühr angeordnet, wenn der Beschwerde abgeholfen oder ihr durch die Beschwerdekammer stattgegeben wird und die Rückzahlung wegen eines wesentlichen Verfahrensmangels der Billigkeit entspricht.

T 1432/12 - Interlocutory revision

Key points

• This decision is about an examination appeal, with amended claims filed on appeal, and wherein the ED did not grant interlocutory revision.
• " Since with the set of claims filed together with the grounds of appeal, the appellant overcame all objections raised by the examining division in their communication dated 28 September 2011 [referenced in the refusal decision according to the state of the file], and no opinion on the potential inventive step of the subject-matter as now claimed can be found in the said communication, the examining division should have rectified its decision under Article 109(1) EPC" 
• The Board's decision is in line with the Guidelines which state that " clearly overcome the grounds for refusal, interlocutory revision should be granted even if further new objections arise" (E-XII, 7.4.2). 

3. Article 109 EPC

3.1 The examining division, referring to D3 and in particular to the spaceblocks 148 shown in figure 8 of D3, which are provided with a C-formed concave surface 146, considered that the subject-matter of claim 1 then on file differed from the machine known from D3 only in that the paddles were formed of rectangular flat plates.

The examining division was of the opinion that:

- the problem of improving air flow through the rotor winding ends was not solved in a machine according to claim 1,
- no technical problem was apparently solved by the identified difference in combination with the other features of claim 1, and
- the replacement of the re-entrant portion 154 of the spaceblocks of D3 (see figure 8) comprising the sidewall portions 162, 164 by flat rectangular plates forming the paddles resulted in a non-functional modification (see item 3 of the communication dated 28 September 2011).

The examining division then concluded that the subject-matter of the claim 1 filed with the letter dated 28 September 2011 lacked an inventive step (Article 56 EPC) having regard to D3.

T 2445/11 - Interlocutory revision

Key points

• The application on the sole ground of multiple independent claims in the same category (Rule 43(2) EPC). The applicant addresses this in the appeal. No interlocutory revision is granted.
• As to the novelty objection mentioned as "Obiter dictum"  in the refusal, the Board notest that there is a "lack of maturity of the novelty objection" and notes that " the Examining Division has cited four more documents but has referred to them only sweepingly in its communication".
• " In view of this outcome, it would have been preferable for the Examining Division to have granted interlocutory revision under Article 109(1) EPC. The Board accepts in principle that there are cases where amended application documents presented on appeal as main request overcome the grounds for refusal yet do not warrant rectification of the decision because of other obvious deficiencies: deficiencies which are newly introduced and immediately apparent or deficiencies which are well explained by remarks or objections included as obiter dicta in the decision to refuse and on which the applicant has had an opportunity to comment. In this respect, the Board takes the view that the expression "considers the appeal to be ... well founded" in Article 109(1) EPC leaves the examining division room for exercising judgment while bearing in mind that the purpose of interlocutory revision is to speed up the procedure. But where, as here, the application was refused on grounds which have subsequently been overcome, and the more fundamental objections have not yet been well developed in the proceedings up to the refusal, there is little point in remitting the case to the boards of appeal."

EPO T 2445/11 - link

Reasons for the Decision

1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.

2. The application as amended with the statement of grounds of appeal contains one independent claim in the "apparatus" category and one independent claim in the "process" category and thus complies with Rule 43(2) EPC. Hence, the sole ground for refusal has been overcome.

3. As to the objections raised under "OBITER DICTUM", the deletion of claims 13 to 15 has removed the basis for the objections under Articles 82 and 84 EPC.

4. The objection under Article 123(2) EPC is directed against the substitution in independent claims 1 and 12 of "in direct response to personalization instructions by the user" for "in response to user inputs". The Examining Division reasoned this objection only by stating that the terms "direct response" and "personalization instructions" could not be found in the description as filed. This reasoning is incomplete, since Article 123(2) EPC does not turn on literal disclosure (cf. Guidelines for Examination, H-IV, 2.2).

T 0893/13 - Interlocutory revision and fee

T 0893/13 - [C]
For the decision, click here.

• After a first refusal, the applicant filed an appeal and interlocutory revision was granted. Thereafter the application was again refused, the applicant filed an appeal, in addition requesting a refund of the first appeal fee.
• The Board decides that it is competent to decide on this request for a refund, and that the request was timely filed in the second appeal. 

Summary of Facts and Submissions

I. The appeal lies against the decision of the examining division, with reasons dispatched with letter of 14 No­vember 2012, to refuse the European patent application No. 07 120 091.9.

II. Earlier in the proceedings, on 3 November 2011, the exa­mi­ning division had already decided to refuse the appli­­cation but then, in response to an appeal, had rectified its decision under Article 109(1) EPC and con­tinued examination.

III. The earlier decision was primarily based on a lack of clarity, [...]

IV. Reimburse­ment of the first appeal fee was not re­ques­ted in the first appeal and was not ordered by the exami­ning division of its own motion. After rectifi­ca­­tion, how­ever, the appellant requested that the exami­ning divi­sion order the reimbursement of the first appeal fee.

V. The decision under appeal is based on the finding that the application did not comply with Articles 83 and 84 EPC. The decision also refers to the document D1: [...] and, in a section entitled "Further Remarks", suggests that the claimed invention "appears" to lack an inven­tive step over D1. Moreover, the examining division ex­plains (see page 3, 4th paragraph) that it does not con­sider a substantial proce­du­ral violation to have occurred during examination lea­ding to the first appeal and "is therefore un­able to reimburse the appeal fee under Rule 103(2) EPC".

VI. Notice of appeal was filed on 18 January 2013, the appeal fee being paid on the same day. A statement of grounds of appeal was received on 25 March 2013. The appellant requested that the decision under appeal be set aside and that a patent be granted based on the documents attached to the grounds of appeal, in par­ti­cular claims 1-14. It also requested that the fee for the previous, i.e. first appeal be reim­bursed.

VII. With a summons to oral proceedings, the board informed the appellant of its preliminary opinion that the claimed invention lacked clarity, Article 84 EPC 1973, sufficiency of disclosure, Article 83 EPC 1973, and inven­tive step, Article 56 EPC 1973. The board also referred the appellant to the jurispru­dence of the boards of appeal, according to which the board was not com­pe­tent to deal with the request for reim­burse­ment of the first appeal fee.

VIII. In response to the summons, with letter dated 25 Au­gust 2015, the appellant withdrew its request for oral proceedings. The oral proceedings were then cancelled.

Reasons for the Decision

Reimbursement of the first appeal fee

1. Following a decision of the Administrative Council of 13 December 2013, an amended version of Rule 103 EPC entered into force on 1 April 2014. According to Ar­ticle 2(2) of that decision, the new rule also applies to appeals pending at the date of entry into force, hence also to the present one.

2. The relevant parts of Rule 103 EPC as presently in force read as follows:

"(1) The appeal fee shall be reimbursed in full
(a) in the event of interlocutory revision or where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation, [...]
(3) The department whose decision is impugned shall order the reimbursement if it revises its decision and considers reimbursement equitable by reason of a substantial procedural violation. In all other cases, matters of reimbursement shall be decided by the Board of Appeal."

Competence of the board

3. Firstly, it has to be decided whether the board is com­petent to decide on the appellant's request to have the first appeal fee reimbursed even though the request was filed only after the examining division rectified its decision in response to the first appeal.

3.1 According to Rule 103(2) EPC, the examining division or­ders reimbursement if it concludes that it is equi­table by reason of a substantial procedural violation. Since Rule 103 EPC does not require there to be a re­quest for reimbursement, the examining divi­sion has to assess of its own motion whether reimburse­ment of the appeal fee is equitable under the cir­cum­stances (see also ­­G 3/03, OJ EPO 2005, 34, reasons 3, 2nd sen­tence). The board has no reason to doubt that the exa­mi­ning divi­sion ful­filled this obligation, as it also express­ly declared in the decision under appeal (page 3, 4th paragraph).

3.2 In J 32/95 (OJ EPO 1999, 713) it was decided that the department whose decision has been impugned does not have the power to refuse a requested reimbursement of the appeal fee but that such power lies with the board of appeal (see the headnotes). This decision was con­firmed by G 3/03 (OJ EPO 2005, 34, see headnote 1). New Rule 103 EPC was expressly meant to codify J 32/95 (see OJ EPO Special Edition No. 1, 2003, 184).

3.3 Although under Rule 103 EPC the examining division has the power to order reimbursement of appeal fee, it does not have the power to decide that the appeal fee is not reimbursed (see also G 3/03, reasons 2). Rule 103 EPC expressly provides that "all other matters of reim­burse­ment shall be decided by the Board of Appeal".

3.4 Therefore, according to Rule 103 EPC the board is com­pe­tent to decide on reimbursement of the appeal fee whenever the examining division revises its de­ci­sion and does not order reimbursement itself.

4. In T 21/02 it was decided that "Where a request for reimbursement of the appeal fee [...] was submitted only after the contested decision had been rectified [...], failing a decision of the department of first instance, no legal basis exists for the Board of Appeal to decide on that request" (see headnote). It was reasoned that, if an appeal "had been fully dealt with (by way of inter­locu­tory revision) and was, thus, no longer pending, when the request for re­imbursement was submitted, [...] the request was sub­mitted in the ab­sence of a pending appeal and could not, hence, con­sti­tute an ancillary issue to be dealt with in appeal pro­ceedings" (see reasons 5). It was further argued that, when a request for reimburse­ment was filed only after rectification, the procedural si­tu­ation was the same as if "the Board of Appeal had decided upon it and re­mitted the case to the depart­ment of first in­stance for further prose­cu­tion" (see still reasons 5; see also T 242/05, headnote).

5. The board disagrees with this finding.

5.1 In particular, the board disagrees that non-reimburse­ment of the appeal fee by the examining division in the case of inter­locutory re­vision of its decision must be equa­­ted with the situation in which the board of appeal has refused a corresponding request.

5.2 G 3/03 states (reasons 3, 4th sen­tence) that "In the absence of a request for reim­burse­ment of the appeal fee, the decision of the depart­ment of the first in­stance granting interlocutory re­vi­sion pursuant to Article 109(1) EPC will make no mention of the issue of reimbursement of the appeal fee, and the appellant will not be adversely affected by the decision."

5.3 Apparently, the appellant is not adversely affected by the granting of interlocutory revision itself. Thus the board takes the main point of that statement in G 3/03 to be that an appellant who did not request reimburse­ment of the appeal fee is not adversely affected by the fact that the examining division did not order reim­burse­ment.

5.4 Since the examining division is not competent to decide that the appeal fee is not reimbursed, an in­ter­locutory revision without an order for reim­burse­­ment cannot be construed as a decision not to re­im­burse.

5.5 Rather, the board con­si­ders that the request for re­imbursement of the appeal fee can be validly filed even after the examining divi­sion has granted interlocutory revision, since Rule 103 EPC entrusts the board with the decision on "all other matters of reimbursement" based on only the two conditions mentioned: That the decision was rectified and the appeal fee was not reimbursed by the exa­mining divi­sion.

6. Therefore, the board considers itself competent to deal with the appellant's request for reimbursement of the first appeal fee.

Termination of financial obligations

7. According to Article 13(2) RFees, rights against the Organisation for the refunding by the European Patent Office of fees are extinguished after four years from the end of the calendar year in which the right arose. The appellant's potential right to have its appeal fee reimbursed arose from the decision of the examining division to grant interlocutory revision. This decision bears the date 26 March 2012, so the Office's potential obligation to reimburse the fee is not extinguished until the end of 2016.

[...]

13. In summary, the board concludes that no substantial pro­cedural error occurred in the examining proceedings leading to the first appeal or the examining division's decision to rectify and that, therefore, the request for reimbursement of the first appeal fee must be rejec­ted.

[...]

17. In summary, the board comes the conclusion that claim 1 lacks clarity, Article 84 EPC 1973.

Order

For these reasons it is decided that:

1. The appeal is dismissed.

2. The request for reimbursement of the first appeal fee is refused.