T 0232/06 (Homocysteine/WAKUNAGA) 22-05-2006

Reasons for the Decision

1. The decision of the Enlarged Board of Appeal in the case G 3/03 of 28 January 2005 deals with the questions of whether in the event of interlocutory revision under Article 109(1) EPC, the department of the first instance whose decision has been appealed has the power to refuse a request of the appellant for reimbursement of the appeal fee and, if the department of the first instance does not have that power, how the competent Board of Appeal should be constituted. The Enlarged Board decided that the department of the first instance is not competent to deal with the matter and instead the Board of Appeal which would have been competent under Article 21 EPC to deal with substantive issues of the appeal if no interlocutory revision had been granted is competent to decide on the request. Accordingly the present Board is competent to decide on the request for reimbursement of the appeal fee.

2. According to Rule 67 EPC, in the event of interlocutory revision the appellant's request for reimbursement of the appeal fee can only be granted if equitable by reason of a substantial procedural violation. In the present case the applicant's argument is that the Examining Division issued its decision upon the basis of a new set of claims filed in response to a single earlier EPO communication, and without giving the applicant any further opportunity to respond, and that the decision is thus based on grounds or evidence on which the applicant did not have the opportunity to present his comments, so that the decision does not comply with Article 113(1) EPC.

The applicant was informed in the communication dated 21 June 2004 of the Examining Division's view that claims 1 to 9 were not allowable in the form drafted because they related to treatment of the human or animal body, and that they did not have the correct format for a second or further medical application, that claims 1, 2, 4, 5, 7, 9 to 16 and 19 were not novel, and that claims 1 to 20 did not involve an inventive step. Reasons for these views were given in the communication. The new set of claims filed on 29 December 2004 in response to the communication consisted of amended claims 1 to 9 with claims 10 to 20 being deleted. Claims 1 to 9 were amended to take into account the treatment of the human or animal body and second medical use format objections of the Examining Division. Thus the amended claims did not contain subject matter on which the Examining Division had not given its view.

The decision of the Examining Division was based on the reasons given in its communication of 21 June 2004 - inter alia the lack of novelty of the claims. The applicant had had the opportunity to present comments and/or amended claims, not only in respect to the second medical use format and treatment of the human or animal body objections, but also with respect to the novelty issue.

The applicant's argument in favour of the request for reimbursement of the appeal fee is that the decision of refusal was made without giving the applicant the opportunity to present comments on the grounds of the contested decision. In essence, the applicant objects that the Examining Division refused the application after only a single communication.

It is the established jurisprudence of the Boards of Appeal (see e.g. decision T 201/98 of 27 July 1999) that an Examining Division is not obliged to issue a further communication if the applicant has presented his comments on a first communication and a decision can be made based on the reasons of the first communication. Although a previous version of the Guidelines for Examination in the European Patent Office, Part C, Chapter VI, Section 4.3, suggested that refusal might be appropriate if the applicant had not made any real attempt to deal with the Examining Division's objections, the present version, dated June 2005, merely states that if the applicant has not dealt with all the main objections, and no positive reaction is to be expected from drawing deficiencies to his attention then immediate refusal should be considered. This is also reflected by the wording of the letter accompanying the Examining Division's communication of 21 June 2004 - see section II, last two paragraphs, above.

The Examining Division indicated in its communication of 21 June 2004 that it was not clear to it which part of the application could serve as a basis for new, allowable claims. The letter accompanying the communication also states that if the various deficiencies referred to in the communication are not remedied then the application could be refused - see last paragraph of section II above. Thus the applicant should have been aware that, if its arguments were not deemed to be persuasive, there was a possibility that the application would be refused. Although it was open to the applicant to file a request for oral proceedings to deal with this eventuality, no such request was made.

The Examining Division clearly stated in the communication dated 21 June 2004 that, amongst other things, original claims 1, 2, 4, 5, 7 and 9 were not considered to be novel in the light of the disclosures of documents D1, D2, D5 (see section IV above), and that claims 1 to 20 were considered to lack inventive step in the light of the disclosure of document D4. However, the redrafted claims 1 to 9 in the applicant's response of 29 December 2004 are directed towards meeting the objections to the original claims that concerned treatment of the human or animal body and the incorrect second medical use format of claims 1 to 9 as originally filed.

Even though it might be appropriate in many cases to draw the applicant's attention to such deficiencies e.g. by a telephone call, as suggested in the Guidelines for Examination in the European Patent Office, edition of June 2005, Part C, Chapter VI, Section 4.3, in the Board's view the Examining Division did not exceed its discretionary power in the present case by not doing so. No substantial procedural violation can be found, which would justify the reimbursement of the appeal fee.