11.4. Reimbursement of appeal fee in case of interlocutory revision
11.4.4 A rectification decision maintaining earlier decision
In T 691/91 the board held that Art. 109 EPC 1973 provided for two legally viable alternatives: to maintain or to annul the decision which was appealed. In the case at issue, the examining division had chosen a third way: to maintain the earlier decision by issuing a decision on rectification, which resulted in the appellant having to file a second appeal against the decision on rectification. This alternative was not covered by the provisions of Art. 109 EPC 1973. This decision was thus held to be ultra vires and the board ordered reimbursement of the second appeal fee. Reimbursement of the first appeal fee was also ordered because a violation of the right to be heard had occurred during the examination proceedings (see also T 252/91).
- T 2381/19
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).
- 2023 compilation “Abstracts of decisions”