11.4.3 Examining division should have rectified decision

In T 647/93 (OJ 1995, 132) it was pointed out that when the examining division did not make use of the possibility of granting interlocutory revision after the mistake had been pointed out in the grounds of appeal, this was normally deemed to constitute a procedural violation justifying the reimbursement of the appeal fee (see also T 808/94, T 898/96, T 861/03, T 1113/06, T 971/06, J 7/07; see also T 685/98, OJ 1999, 346).

In T 183/95 the board held that the appellant's request for reimbursement of the appeal fee in the event of interlocutory revision could not be granted under R. 67, first half sentence, EPC 1973, since the examining division had not rectified its decision. However, it held that a refund of the appeal fee may be ordered under R. 67, second half sentence, EPC 1973, if the appeal is allowed and the board finds this equitable by reason of a substantial procedural violation. In T 2528/12 the board also declined to order reimbursement, because although interlocutory revision had not been granted, as it should have been, that was not a substantial procedural error. That the grant proceedings had taken longer as a result had not adversely affected the appellant in a legal sense.

In T 794/95 the board did not consider it equitable to order the reimbursement of the appeal fee, since the examination procedure up to the decision under appeal was not tainted with any failure and the necessity for the appellant to file an appeal emerged exclusively from the substance of the decision, not because of any procedural shortcomings up to this stage and equally not from the later incorrect handling of the appeal by the examining division (i.e. the failure to rectify its decision).

In T 685/98 (OJ 1999, 346) the board held that where a fundamental procedural right had manifestly been violated in a refusal pursuant to Art. 97(1) EPC 1973, or in the foregoing examination procedure, a further substantial procedural violation occurred if the examining division failed to grant interlocutory revision on appeal (following T 647/93, OJ 1995, 132; see also T 1765/13), since such a right had to be safeguarded irrespective of the substantive merits of the case.

In T 898/96 the board took the view that the decision of the examining division to refuse the application having regard to Art. 113(2) EPC 1973 should have been rectified by way of interlocutory revision. The failure to rectify such a decision in this way was a substantial procedural violation. However, the board did not consider the refund of the appeal fee to be equitable because the applicant did not approve this text of the application until he filed an appeal.

In T 704/05 the board found that the examining division could have set its decision aside by way of interlocutory decision pursuant to Art. 109(1) EPC 1973. However, given that the examining division was expressly precluded from giving its reasons for not granting interlocutory revision, it was not open to the board to criticise this omission. The mandatory but necessarily silent judgment made pursuant to Art. 109(1) EPC 1973 as to whether an appeal refuted the reasons for a refusal was not an exercise of discretion and ipso facto left no room for an inquiry as to whether discretion had been properly exercised. The board was aware that a number of decisions of the boards of appeal had taken a different view on this point ‒ to the extent of sometimes castigating such omission as a substantial procedural violation ‒ but respectfully suggested that these decisions had not given sufficient weight to the implications of the silence imposed on the examining division by Art. 109(2) EPC 1973.

In case T 1982/07 the board said that it was fundamental to the principle of fair trial that in the examination an applicant, when confronted with new prior art documents, was not only given the right to be heard, but also the right to react thereto by amending the claims in order to overcome the prior art references. In the case at issue, the way the examining division exercised its discretion under R. 86(3) EPC 1973 (now R. 137(3) EPC) was erroneous, as it did not allow the applicant to react appropriately, but rather tied its hands to an extent neither mandated by procedural efficiency nor justified in the light of the prior art documents. The examining division thus exercised its discretion in an unduly restrictive manner, thereby committing a substantial procedural violation. It would have been incumbent on the examining division to rectify the decision pursuant to Art. 109(1) EPC, but this was not done. The board ordered the remittal to an examining division that had not previously dealt with this case.