11. Reimbursement of appeal fees

Catchword:

1. 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). 

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).

Orientierungssatz:

Die Frage, ob ein Ermessen fehlerfrei, zum Beispiel unter Berücksichtigung der richtigen Kriterien ausgeübt wurde, ist eine inhaltliche Frage materiell-rechtlicher Natur, und keine verfahrensrechtliche. Daher liegt in einer inhaltlich unrichtigen Ermessensentscheidung, die unter korrekter Anwendung der Verfahrensvorschriften des EPÜ ergangen ist, kein Verfahrensmangel im Sinne der Regel 103 (1) a) EPÜ (Entscheidungsgründe Punkt 1.4).

Catchword: 

1. Two successive appeals, interlocutory revision, request for reimbursing first or second appeal fee.  2. Giving one single ground for the refusal, presently a violation of Article 123(2) EPC, may not be procedurally optimal, but is in itself not a procedural violation. Depending on the subject-matter claimed, it can be a defendable procedure to refrain from examining certain substantive issues, such as inventive step and novelty, as long as the division is not convinced that the potential distinguishing features have a proper basis under Article 123(2) EPC. An erroneous assessment of a substantive issue by the division is not a substantial procedural violation, either. In sum, there was no basis for the ordering of the reimbursement of the (first) appeal fee in the decision allowing the interlocutory revision (Reasons 5.9).  3. The board notes that the applicant may not have been able to avoid paying the second appeal fee in all circumstances. Even assuming for the sake of argument that the division would not have allowed the interlocutory revision and instead would have referred the first appeal to the Board of Appeal under Article 109(2) EPC, the payment of a second appeal fee might still have become unavoidable. Since the first refusal decision only dealt with added subject-matter, it would still have been quite likely that the case would have been remitted to the examining division for examination of the outstanding substantive issues even after a successful (first) appeal (Reasons 5.13).  4. Once the examining division reopens the examination, it is formally not prevented from re-examining all the issues which were already the subject of the previous decision. The principle of prohibition of reformatio in peius does not apply in this situation (Reasons 5.18).

Catchword:

If a request for oral proceedings is withdrawn after a date for oral proceedings has been set but before the notification of a communication issued in preparation for the oral proceedings, the withdrawal occurs "within one month of notification" for the purpose of Rule 103(4)(c) EPC.