11.7.1 Causal link between substantial procedural violation and filing of appeal

In order to render the reimbursement of the appeal fee equitable, as a rule a causal link must exist between the alleged procedural violation and the decision of the department of first instance that necessitated the filing of an appeal (T 388/09; see also J 9/10, T 1101/92, T 1198/97, T 2373/11). For procedural deficiencies of a general nature (such as excessive length of proceedings) which affect the whole procedure leading to the contested decision, reimbursement can be equitable even in the absence of a causal link (T 2707/16). In T 3071/19 the board held that if as a result of a deficiency the case is remitted to the examining division without any substantial progress having been made on it, reimbursement of the appeal fee may well be equitable even if the deficiency cannot be directly linked to the filing of the appeal.

In T 677/08 the board held there was no causal link between the procedural violation and the necessity to file an appeal. The application was refused for lack of inventive step, and so the appellant would have had to file the appeal even if the examining division had sufficiently reasoned its refusal of the request for a video conference.

In T 2111/13 the board held that, according to established case law, for the reimbursement of the appeal fee to be equitable a causal link between the substantial procedural violation and the filing of the appeal was required. According to an alternative approach, a procedural violation is not to be deemed substantial if the outcome of the proceedings would not have been different had the violation not occurred (see in this chapter V.A.11.6.2). In the case at hand, the board saw no need to choose between these two approaches and rejected the appellant's request for reimbursement.

In the cases that follow the boards held that reimbursement was not equitable because no causal link could be established:

In T 2106/10 the board reiterated that any reimbursement of the appeal fee had to be equitable and depended on the question of whether the procedural deficiencies were 1) substantial and 2) forced the appellant to file the present appeal. In the case in hand the board did not address the question as to whether a substantial procedural violation had taken place, since the board was of the opinion that the appellant had to file the appeal irrespective of whether or not substantial procedural violations had taken place.

In T 41/97 a refund was not equitable because the procedural error (refusal of interlocutory revision prior to receipt of the statement of grounds of appeal and before the expiry of the period for filing it) was not the reason the appeal had been filed (see also T 1891/07, T 1994/11, T 2227/09).

In T 711/11 the appellant alleged that the examining division found a lack of unity without providing adequate reasoning. The board stated that lack of unity was not the sole ground given in the contested decision for refusing the application. The appellant would in any case have had to file an appeal in view of the ground of lack of inventive step. Therefore, the board considered the reimbursement of the appeal fee not equitable.

In T 893/90 the contested decision to refuse the application on the grounds of lack of novelty was based primarily on document 1, on which, in contrast to document 2, the appellant had had adequate opportunity to put forward comments. The board stated that the decision under appeal had been fully reasoned, and that the procedural violation as regards the reliance on document 2 was thus not sufficiently closely linked to the need to pay an appeal fee for it to be equitable to reimburse the fee.

In T 601/92 the opposition division had not commented, either in a communication or in its decision, on auxiliary request (5) submitted by the patent proprietor in good time before the decision was issued. Because auxiliary request (2), which had been submitted in the appeal proceedings and which preceded auxiliary request (5), was allowed, the board did not see any reason, despite the procedural violation, to reimburse the appeal fee, as this would not have been equitable.

In T 2377/09 the board took the view that reimbursement of the appeal fee solely on the grounds of the established procedural violation would not be in accordance with the equitability requirement of R. 67 EPC 1973 (R. 103 EPC). This was because the rejection decision was based on additional, alternative grounds which had given the appellant no cause to claim a substantial procedural violation and against which it would in any case have had to appeal to get the decision set aside (with reference to T 893/90, T 219/93, T 4/98 (OJ 2002, 139) and T 978/04).

In T 840/07 the appellant's request which had succeeded in the appeal was the same as the main request which it had filed before the examining division but had later replaced. The appellant had not pursued that request to the point where it became the subject of a decision. The board concluded that the appellant had had no choice but to appeal if it wanted the result it had eventually obtained before the board. To reimburse the appeal fee would have given the appellant a fee-free appeal which would be inequitable (see also T 784/11, referring to T 4/98).

In T 1891/07 the board held that despite the presence of a substantial procedural violation it would not be equitable to reimburse the appeal fee because the violation could not have been causative in filing the appeal since it occurred after the notice of appeal had been filed.

In T 1990/08 the appellant submitted that the examining division had committed a procedural violation as it had not provided a translation of D1 but had used it to deny inventive step. The board held that even if the inventive step objection including the appraisal of document D1 in the decision were disregarded, the contested decision would still be negative as it had also relied on Art. 84 and 123(2) EPC to refuse the application. Regardless of whether a substantial procedural violation had occurred or not, the appellant would have had to appeal in order to obtain a reversal of the first-instance decision. The alleged procedural violation could not have been the immediate and only cause of the need to appeal and to pay an appeal fee.

In T 433/08 the board and the parties agreed that a violation of Art. 113(1) EPC had occurred because the opposition division had relied in its decision on a document which had not been referred to in the course of the opposition proceedings. The board held, however, that the opposition division would not have reached a decision more favourable to the opponent if it had not taken into account said document. Thus, the opposition division had not acted to the detriment of the opponent. The board concluded that the rights of the opponent (appellant) were not curtailed to an extent that would make the reimbursement of its appeal fee equitable by reason of a substantial procedural violation.

In T 1680/11 the board held that an alleged procedural violation with respect to a decision to rectify under Art. 109 EPC could not justify refunding the appeal fee. A decision to grant interlocutory revision could not be the reason for filing the appeal, as it was ‒ by its very definition ‒ taken after the appeal had been filed.

In T 1414/18 the board found there was a causal link between the substantial procedural violation – the examining division's statement in its communication that "[t]he next procedural step will be summons to oral proceedings during which the application will be refused (Art. 97(2) EPC)" – and the necessity of filing an appeal against the examining division's decision, and found the reimbursement of the appeal fee to be equitable (on its own motion).