Wednesday, September 07, 2022 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."

Friday, February 19, 2021 D 5/19 - Remitting to the Board of Appeal with reasons amounts to a decision on the merits of the appeal

We do not often post appeals against decisions on EQE grades, but in this decision a general principle was addressed: how does the Board of Appeal with a situation wherein a first instance comments with a positive opinion on the allowability of an auxiliary request when remitting the appeal to the Board of Appeal in view of the main request not being allowable?
This appeal was filed against the decision of the Examination Board for the EQE 2019 which held that the answer paper to the ED 2019 had been awarded 43 marks and therefore the grade "FAIL". The appellant requested that decision to award her a "FAIL"  be set aside and that her paper instead be awarded a "PASS" (main request), or, alternatively, a "COMPENSABLE FAIL" (auxiliary request).  The appellant was informed by the Exam Secretariat that her appeal had not been allowed by the Examination Board (no interlocutory revision). This letter also stated: "The Examination Board wishes to add the following comment: After remarking, the Examination Board considers that the main request is not allowable. However, the auxiliary request could be allowable. The candidate could be awarded 46 marks: [...]." The Examination Board thus remitted the appeal to the Appeal Board (Disciplinary Board of Appeal) without rectifying its decision. Thus, the situation arise that interlocutory revision did not take place as that cannot be done in view of an auxiliary request, while the Examination Board did comment on the reasons for remitting and on the merits of the auxiliary request. How did the Appeal Board deal with this situation, also in view of their restricted competence in EQE appeals (in particular, the allegedly incorrect, and insufficient, number of points awarded to the appellant's answers not being open for review by the Appeal Board)?

Wednesday, December 12, 2018 T 2303/16 - refused for lack of two-part form, conciseness and reference numerals

Car towed because of a parking violation

The application was refused after a single office action on the grounds of lack of conciseness, two-part form and reference numerals. In appeal these are addressed but no interlocutory revision was given. 

After entering the regional phase at the EPO in 2006, the applicant received its first office action in 2014. The office action raised clarity issues and a few smaller problems, in particular lack of reference numerals. The international search report had complained earlier about lack of two-part form, and lack of conciseness due to too many independent claims (in addition of substantive problems). In it's reply, the applicant amended for the clarity issue, and addressed the patentability of the claims. The second communication in ten years was a refusal. 

The board did not see a problem with a refusal based on formal issues that were only identified in the ISR, but did rule that interlocutory revision should have been granted. 

Friday, November 20, 2015 T 0893/13 - Reimbursement of earlier appeal fee

This appeal follows an earlier appeal against the decision of the examination division to refuse the patent application based on a.o. a lack of clarity. In the earlier appeal, the examining division rectified its decision under Article 109(1) EPC and continued examination, only to decide (again) that the application did not comply with a.o. Article 84 EPC.

In the first appeal, the appellant did not request reimbursement of the first appeal fee, nor did the examining division order such reimbursement of its own motion. However, after rectifi­ca­­tion, the appellant did request reimbursement of the first appeal fee. In the present appeal, the appellant now (again) requests that the fee for the first appeal be reimbursed.

Friday, July 04, 2014 J 22/12 - As grant falls, opposition fails

Two appeals for the price of one: an earlier appeal filed by the proprietor against the grant of its patent and an appeal  -the subject of this decision- directed against what is purported to be a decision of the Examining Division set out in a letter dated 24 May 2012. Even though the Notice of Opposition seemed to be duely filed, well within 9 months from the date of mention of the grant, the letter stated that the Appellant's Notice of Opposition could not be considered as validly filed because the decision to grant was rectified  by the Examining Division as a result of the earlier appeal.

Summary of Facts and Submissions

I. The appeal is directed against what is purported to be a decision of the Examining Division set out in a letter dated 24 May 2012. This letter stated that the Appellant's Notice of Opposition could not be considered as validly filed.

II. The factual background to this decision involves two appeals: the appeal which is the subject of this decision and which is mentioned above, and a chronologically earlier appeal filed by the proprietor against the grant of its patent.

III. The decision to grant the European patent No: 1358272 was notified to the proprietor's representative on 16 February 2012. The EPO took this action because it had in error deducted the fees for grant and publication from the account of a firm of representatives that had ceased to represent the proprietor in 2005 [albeit the automatic debit order was revoked per 26.10.05 - the latter was however overlooked by the EPO]. This erroneous action of the EPO led to the mention of grant of the patent in suit appearing in the Patent Bulletin on 14 March 2012

IV. On 11 April 2012 the proprietor's representative filed a notice of appeal and a statement of grounds of appeal against the decision to grant the patent, "...prematurely and in error ...". The detriment that the proprietor claimed to had suffered was that he was no longer able to file a divisional application [and that the time limits for the costly step of validation were brought forward in time].

V. On 10 May 2012 the Appellant filed a notice of opposition against the patent whose mention of grant had appeared in the Patent Bulletin on 14 March 2012.

VI. On 15 May 2012, the Examining Division informed the proprietor's representative that it would rectify its decision to grant the patent and would refund the appeal fee [interlocutory revision inder Article 109 EPC].

VII. In a letter dated 24 May 2012, the Formalities Officer, on behalf of the Examining Division, informed the Appellant as follows:

"...

Following the appeal of 11.04.2012 the decision to grant dated 16.02.2012 was rectified with EPO Form 2710 of 15.05.2012 and sent to EPO postal services on 08.05.2012.
As the examination procedure is resumed, it is not possible to file an opposition during this part of the procedure.
Consequently your notice of opposition of 10.05.2012 cannot be considered as validly filed.

For the Examining Division"

VIII. On 24 July 2012 the Appellant filed an appeal against the purported decision of the Examining Division set out in the Formalities Officer's letter dated 24 May 2012 and paid the appeal fee. A statement of grounds of appeal was filed.

IX. The Appellant argued that it had fulfilled all the requirements for filing a valid opposition. The interlocutory revision of the decision to grant by the Examining Division took place subsequent to the filing of the opposition and did not affect the validity of the filing of the opposition. The Appellant referred to the principle of legal certainty in support of its position.

[...]

Reasons for the Decision

Admissibility of Appeal

1. The key issue to be decided is whether the Examining Division's letter of 24 May 2012 is a decision, or merely a communication. Whether a document is to be considered as a decision depends on the substance of its contents, not on its form - see J 8/81 OJ EPO 1982, 10, point I of Headnote and point 3 of the Reasons. The criterion of substance has to be assessed in its procedural context - see e.g. T 713/02 OJ EPO 2006, 267, points 2.12 and 2.14, second paragraph of the Reasons.

2. Procedural context of the Examining Division's letter of 24 May 2012

2.1 In the present case a valid appeal against the decision to grant had been filed by the Respondent-Proprietor after the publication of the mention of the grant.

2.2 Article 106(1) EPC provides that an appeal shall have suspensive effect. Thus, by filing a (valid) appeal against a decision to grant, an applicant/proprietor prevents the decision to grant from having any legal effect until the appeal is resolved. Otherwise an appeal would be nugatory (decision J 28/94, OJ EPO 1995, 742). If it is not possible to suspend or to defer the publication of the mention of grant until such an appeal is decided, the EPO should take all necessary steps to advise the public that the mention of grant was no longer valid (see also T 1/92, OJ EPO 1993, 685, point 3.1 of the Reasons). On the other hand, even after an appeal the decision as such remains and can only be set aside or confirmed by the Board of Appeal (see J 28/03, OJ EPO 2005, 597) or by way of interlocutory revision under Article 109(1) EPC. This means that the validity of an opposition filed against the patent concerned depends on the outcome of the appeal of the applicant/proprietor against grant.

2.3 Thus, by the time the Appellant filed its notice of opposition, the legal consequences of the decision to grant the patent had become subject to the suspensive effect of the Respondent-Proprietor's appeal against the decision to grant. As the Examining Division decided to rectify its decision to grant under Article 109 EPC, neither this decision, nor the publication of mention of grant had any legal consequences. Thus no granted patent is deemed to have existed against which an opposition might have been filed. It is thus immaterial whether or not the Appellant had fulfilled all the requirements for filing a valid opposition.

2.4 In the light of this procedural situation, namely that there were no proceedings in existence in which a decision could be made vis à vis the Appellant, and from the plain wording used, the letter of 24 May 2012 is to be seen as a mere communication of information, this information being that there is no granted patent which may be opposed. This letter clearly makes no decision on, nor reference to, the merits of the Appellant's opposition. That this communication is the last word of the EPO on this subject does not imply that it has decisional character; once the EPO has provided this information to the Appellant no useful purpose would have been served by repeating it. Indeed, the legal character of a document issued by the EPO (such as the letter of 24 May 2012) cannot be determined or altered by actions, or inaction, by the EPO after it has been issued. Thus the Appellant's argument that the letter of 24 May 2012 is to be considered as a decision because the EPO did not subsequently issue a further document in this matter is to be rejected. Moreover, under no circumstances is an Examining Division empowered to decide on the "validity", i.e. the admissibility of a (notice of) opposition. As the Appellant itself put it in its letter dated 25 October 2012: the Examining Division is clearly and simply the wrong instance for such a decision.

3. Article 107, first sentence, EPC provides that any party to proceedings adversely affected by a decision may appeal. This provision thus contains the requirement that there was a decision. As in the given circumstances the letter sent by the Formalities Officer on behalf of the Examining Division did not constitute a decision within the meaning of Article 106(1) EPC any appeal against that letter is inadmissible.

4. As set out in point 3 above, the Board has concluded that there was no decision. Thus the Appellant is not a person entitled to appeal under Article 107 EPC, and hence its appeal must be rejected as inadmissible in accordance with Rule 101 EPC.

[...]

Order

For these reasons it is decided that:

The appeal is rejected as inadmissible.

[...]

Epilogue
           
The applicant paid the fee for grant and publishing, together with the fee for further processing, on 20.07.2012, and filed a new divisional (the fifth out of this application) on the same date.
A new decision to grant was issued on 18.10.12, indicating that the mention of the grant would be published in the European Patent Bulletin of 14.11.12.
Two oppositions were filed on 13.08.13, one day before the end of the opposition period - one by the same opponent as the above Appellant, one by another opponent.
The dominos keep on falling...

This decision has European Case Law Identifier:  ECLI:EP:BA:2013:J002212.20131107. The whole decision can be found here. The file wrapper can be found here. Photo by Jacqui Brown
obtained via Flickr.

Note: we usually discuss decisions that were made available online on the EPO website in the last week or so before our blog, whereas the above decision was put online on 07.04.14, shortly before we started to blog at a regular pace. However, I consider the above decision a quite unusual one, and therefore decided to put it on the blog.