An interlocutory revision must be granted if amendments clearly overcome the grounds for refusal

In case T 0682/22, Applicant appealed a decision of the Examining Division (ED) to refuse European patent application No. 14889608.7 for lack of novelty under Art. 54(3) EPC. The Applicant filed amended claims with their grounds of appeal and requested, inter alia, rectification of the decision under Art. 109(1) EPC, arguing that amended claim 1 was based on subject-matter which had been deemed allowable by the ED in the decision. The Board discussed why the ED should have granted the interlocutory revision and pointed out that there were still some significant inconsistencies between the current Guidelines and the established case law as to the interpretation of Art. 109(1) EPC.

• Different interpretation of Article 109(1) EPC from that provided for in the Guidelines for Examination in the EPO - application of Article 20(2) RPBA 2020 (see point 2.4.3 of the Reasons).

Background

The ED refused an application for lacking novelty under Art. 54(3) EPC yet the ED explicitly stated that the Art. 54(3) EPC document did not disclose a feature of dependent claim 5. The Applicant argued that amended claim 1, filed with the grounds of appeal, comprised all features of said dependent claim 5, so that the novelty objections under Art. 54(3) EPC were clearly overcome and interlocutory revision should be granted accordingly.

The Board saw no reason to reverse the ED’s assessment regarding Art. 54(3) EPC. However, the Board discussed why the ED should have granted interlocutory revision.

Conflict between Guidelines and Case Law

Under Art. 109(1) EPC, if the department whose decision is contested considers the appeal to be admissible and well founded, it shall rectify its decision. The Board concluded---with reference to T 691/18, Reasons 2, T 139/87, Reasons 4, and T 1060/13, Reasons 4.1---that it was established case law of the Boards of Appeal that further objections which arise in a request filed with the grounds of appeal, but which were not the subject of the contested decision, cannot preclude the application of Art. 109(1) EPC. Even if amendments raise new objections not previously discussed, interlocutory revision must be allowed since the main purpose of interlocutory revisions is to shorten appeal proceedings for procedural expediency and economy and to avoid unnecessary workload for the Boards of Appeal.

The Board opined that their conclusion was in principle also reflected in the Guidelines about interlocutory revision (E-XII, section 7), but found that the following passages of those Guidelines (E-XII, section 7.4.2, paragraphs 5 and 6) were not consistent with the Board’s conclusion and considered it appropriate to point out these inconsistencies:

“In arriving at this decision, the examiner takes 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). This is in the interest of procedural efficiency and to the benefit of the applicant (no second appeal fee necessary, see T 2445/11).

If 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 as indicated above.”

The Board commented on these parts of the Guidelines as follows:

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 Art. 123(2) EPC or whether previous objections referenced in the appealed decision were raised by the first-instance department.

The Board was aware of T 2445/11, which is referred to in the Guidelines, E-XII, section 7.4.2, This decision disagreed with the approach of T 1060/13 as possibly being “too rigid, as it leaves no room for a pragmatic assessment of the situation with a view to procedural efficiency and may result in a needless repetition of the first-instance proceedings” (T 2445/11, Reasons 8). .

The Board did not follow the conclusions drawn in case T 2445/11. The Board found that the fact that the first-instance proceedings must be “repeated” was a consequence of the very fact that the ED decided to refuse an application on specific grounds – and not on others – and that these specific grounds were overcome with the appeal. In such a situation and in line with the established case law, Art. 109(1) EPC obliged the ED to rectify its decision and continue examination of the application.

Decision of the Board

The Board decided that the ED should have rectified its decision because amended claim 1 filed with the grounds of appeal clearly overcame all the objections raised in the appealed decision, in view of the statements made by the ED. The Board remitted the case for further prosecution under Art. 111(1) EPC.

Furthermore, the fact that the ED did not rectify its decision did not constitute a substantial procedural violation, as the Board could not identify objective deficiencies in the examination proceedings.