T 17/22 - On the "Invitation pursuant to Rule 137(4) EPC and Article 94(3) EPC"

In the present case, the examining division issued a decision to refuse the application based on the ground under Article 123(2) EPC and on lack of novelty, lack of inventive step and lack of clarity. However, the examining division had issued only two communications before deciding to refuse the application: the first was a communication under Rules 161(1) and 162 EPC, inviting the applicant to correct any deficiencies noted in the written opinion raised by the EPO as ISA in the international phase, and the second was a communication under Rule 137(4) EPC headed "Invitation pursuant to Rule 137(4) and Article 94(3) EPC", accompanied by an annex raising an objection under Article 123(2) EPC and the statement: "nota bene: The amendment appears also not suitable to remedy the deficiencies". In the statement setting out the grounds of appeal, "the appellant contended among others that the examining division had committed a substantial procedural violation as, in the proceedings before the examining division, the appellant never had the opportunity to address the objections as expressed in the appealed decision. Moreover, with the invitation pursuant to Rule 137(4) EPC, the appellant had only been alerted that certain amendments had not been sufficiently identified and/or their basis in the application as filed has not been sufficiently indicated. The subsequent decision to refuse the European patent application without any further ado had come completely to the surprise of the appellant. Thus, the appellant submitted that the right to be heard under Article 113(1) EPC had been violated.".
The Board considered the scope of Art. 94(3) EPC in detail and considered that at least one substantive communication pursuant to Art. 94(3) EPC and Rule 71(1) EPC is required before a decision to refuse the application on substantive grounds is issued (or, exceptionally, summons for OP). The Board addressed in detail whether a communication under Rules 161(1) and 162 EPC can/cannot be considered a communication under Article 94(3) EPC and whether an "Invitation pursuant to Rule 137(4) EPC and Article 94(3) EPC" can/cannot considered a substantive communication under Article 94(3) EPC.

T 682/22 - No interlocutory revision despite single ground for refusal overcome by amendment: what does the Board say?

In the present case, the application was refused due to lack of novelty. The applicant appealed with a sole request in which the applicant amended the independent claims. The amendments included the addition of a feature to the independent claims which, according to a positive statement in the annex to the summons for oral proceedings before the examining division, made the claim novel. Nevertheless, interlocutory revision was not granted (possibly because the ED considered further amendments to extend subject-matter, but -in accordance with Art.109(2), the reasons were not given). The Board of Appeal discussed the breath and the established case law of Art.109(1) EPC, as well as the Guidelines, and 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. The Board concluded that "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 or whether previous objections referenced in the appealed decision were raised by the first-instance department" and noted that "the established case law (...) and the current Guidelines are inconsistent with each other."  The Board conclude that, in the current case, "the appeal is "well founded" within the meaning of Article 109(1) EPC. There is also no apparent reason to contest that the appeal is "admissible" within the meaning of Article 109(1) EPC. The examining division should therefore have indeed rectified its decision and continued with the examination of compliance with the requirements of the EPC. However, for whatever reasons, they did not do so."