Granting interlocutory revision may amount to a procedural violation

This article is about EPO case: T 0955/20

• A request for reimbursement of the appeal fee under Rule 103(1)(a) EPC can no longer be filed after the department of first instance has granted interlocutory revision (Reasons 2).
• If the department of first instance grants interlocutory revision only to refine the written reasons which already complied with Rule 111(2) EPC, this may constitute a substantial procedural violation (Reasons 1).
• Such a substantial procedural violation may justify the reimbursement under Rule 103(1)(a) of the appeal fee paid for a subsequent appeal (Reasons 3.1 and 3.2).

Background

An appeal was lodged against the decision of the Examining Division (ED) to refuse European patent application No. 09151235.0, which was the second refusal decision as the ED had previously rectified its first refusal decision. The ED did not allow the request for reimbursement of the first appeal fee for lack of legal basis. With the second appeal, the Appellant requested granting of the main request and reimbursement of the first appeal fee. Later on, the Appellant requested reimbursement of the first appeal fee or, alternatively, of the second appeal fee.

The ED refused the application for lack of inventive step over document D1 in its first decision. The appeal filed against this decision was allowed by granting interlocutory revision under Article 109(1) EPC. A summons to oral proceedings was issued then, in which the objection of lack of inventive step over document D1 was maintained with “only slightly modified reasoning”. Apparently, the ED felt “that it had not addressed the "probabilistic dictionary" feature of the invention in sufficient detail and had therefore rectified its first decision”.

Procedural violation

The Board considered that “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” and that 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”. The Board considers that this amounts to a procedural violation and, as it costed considerable and unnecessary procedural delays, the procedural violation must be considered to be a substantial one.

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

The reimbursement of the first appeal fee was requested by the appellant for the first time during the first-instance proceedings leading to the second refusal decision.

The present Board considers 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”. In this way, the request for reimbursement was conducted as part of the proceedings that deal with the appeal and therefore,  “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”. The Board is of the opinion that, as the issue of reimbursement is a settled matter, it cannot be taken up again in response to a subsequently filed reimbursement request.

Furthermore, the Board considers that, “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”.

In view of this, the Board decides that “it is not competent to deal with the request for reimbursement of the first appeal fee, which therefore has to be rejected”.

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

The Board went on to consider that (underlined added):

“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.”

The Board also considered that:

“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”

Inventive step and remittal for further prosecution

The Board decided that the main request lacked inventive step and that “the assessment as to whether the auxiliary request overcomes the objection of lack of inventive step over document D1 requires a certain amount of investigation” which the Board would be capable of carrying out.

However, if the Board were to do that and conclude that the auxiliary request lacked inventive step, “the appeal would have to be dismissed, and it would not be possible to settle the case in an equitable manner with respect to the reimbursement of the appeal fee”.

However, the second appeal fee could be reimbursed if the case would be remitted to the examining division for further prosecution based on the auxiliary request, which was newly filed in the second appeal proceedings.

In view of this, the Board decided to remit the case to the Examining Division for further prosecution on the basis of the auxiliary request, and to reimburse the second appeal fee.