T 1891/07 13-03-2009

The present decision was taken after the revised European Patent Convention (EPC) entered into force on 13 December 2007. Since the application was pending at that time, the board has applied the transitional provisions in accordance with Article 7(1), second sentence, of the Act revising the EPC of 29 November 2000 and the Decisions of the Administrative Council of 28 June 2001 (Special edition No. 1, OJ EPO 2007, 197) and 7 December 2006 (Special edition No. 1, OJ EPO 2007, 89). Articles and Rules of the revised EPC and of the EPC valid until that time are cited in accordance with the Citation Practice (see the 13th edition of the European Patent Convention, page 4).

1. Article 108 EPC 1973 requires inter alia that a notice of appeal must be filed within two months after the date of notification of the decision and that a written statement setting out the grounds of appeal must be filed within four months after that date. In accordance with Article 109(1), first sentence, EPC 1973 if an examining division whose decision is contested considers the appeal to be admissible and well founded it shall rectify its decision. It is evident that receipt of the statement of grounds of appeal is a prerequisite for an examining division when applying the provisions of Article 109(1), first sentence, EPC 1973 to consider whether the appeal is well founded.

1.1 In the present case it appears that the examining division considered the reasoning filed with the notice of appeal to constitute the statement of grounds of appeal. As a result, the file was referred to the Boards of Appeal before the new claims and further reasoning were filed with the letter of 27 November 2007, although these were filed within the four month time limit for filing the statement of grounds. The further reasoning together with the amended claims were clearly intended by the appellant to serve as the statement of grounds. This is derivable from the letter of 27 November 2007 in which the representative explains that inter alia the new claims and further reasoning were being filed "according to the article 108 EPC" and "in order not to lose any right of appeal". Also from the reference to "following claims" in the three pages accompanying the notice of appeal (page 3, first and final paragraphs) it appears that a set of claims was to be filed.

1.2 It is customary that an appealing party takes advantage of the two time limits provided for in Article 108, first and third sentences respectively, EPC 1973 by firstly filing a notice of appeal and later filing the statement of grounds and it has the right to fully exhaust those time limits. It may, of course, choose not to do so and file the statement of grounds together with the notice of appeal. If in such a case there is an explicit statement to that effect whereby the appellant foregoes its right to fully exhaust the four month time limit or this is clearly implicit in the circumstances, the board can see no legal barrier to issuing the order on interlocutory revision without delay. If, on the other hand, in a case such as the present where these conditions do not prevail it is incumbent on the examining division to wait until the filing of the full content of the statement of grounds or the expiry of the four month time limit, whichever comes first. In the present case the issuance of the order to refuse interlocutory revision before receipt of the statement of grounds deprived the applicant of the possibility of a fore-shortened appeal procedure provided by Article 109 EPC 1973 and amounts to a substantial procedural violation, see T 41/97 Reasons point 5.

1.3 Despite the presence of a substantial procedural violation the board considers that it would not be equitable to reimburse the appeal fee (Rule 67 EPC 1973). The violation cannot have been causative in filing the appeal since it occurred after the notice of appeal had been filed.

1.4 In accordance with Article 11 RPBA (OJ EPO 2007, 536 to 547) if fundamental deficiencies are apparent in the first instance proceedings a case is to be remitted to the department of first instance unless special reasons present themselves for doing otherwise. In the present case not only are no such special reasons apparent but remittal is appropriate also for the reasons set out below.

2. Rule 137(3) EPC provides that "after receipt of the first communication from the examining division the applicant may, of his own volition, amend once the ... claims ... . No further amendment may be made without the consent of the examining division."

2.1 The claims on which the contested decision was based were the subject of a second amendment in response to communications pursuant to Article 96(2) EPC 1973 from the examining division. At the time of filing the appeal the appellant therefore had exhausted his rights under Rule 86(3) EPC 1973 to amend the claims without the consent of the examining division.

2.2 It is established case law of the boards that in an ex parte case where claims are significantly amended on appeal which require substantial further examination, the case should be remitted to the examining division, see Case Law of the Boards of Appeal, 5th edition 2006, VII.D.9, 5th paragraph. The appellant´s right to appeal to a second instance is thereby maintained, both in relation to the exercise of discretion under Rule 137(3) EPC and in relation to the formal and substantive allowability of the claims. In the present case it is evident that the examining division did not consider the most recently filed amended claims before ordering that the case be referred. The amendments made to claim 1, however, are such that not only the substantive assessment contained in the decision would have to be reviewed but also the question would have to be addressed of whether the amendments made to both claim 1 and the dependent claims affect formal allowability.