11.4. Reimbursement of appeal fee in case of interlocutory revision
11.4.5 Re-opening examination after rectification
In T 142/96 the practice of re-opening examination after rectification was held to be contrary to the principle of procedural economy underlying Art. 109 EPC 1973 and so constituted a substantial procedural violation.
In T 2247/09 the examining division had granted interlocutory revision, then proceeded with the examination of the new subject-matter put forward with the appeal, before refusing the application again in its second decision. The appellant claimed that he had had to pay two appeal fees in order to have the claims considered by a board of appeal. The board noted that the reasons given in the examination division's second decision differed from those given in its first decision. Moreover, the decision to grant interlocutory revision had been correct because the applicant's new request had removed the reasons for the decision under appeal. The mere fact that the further examination again resulted in the refusal of the application did not constitute a substantial procedural violation.
- 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”