CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 2381/19 – Interlocutory revision by an ED and continuation of the proceedings with the same objection

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The application relates generally to mobile devices, and specifically to a method, system and apparatus for location and time-based messaging using text based tags.

Brief outline of the procedure

The application was refused twice by an ED.

A first refusal, was based on objections under Art 123(2) was appealed.  Interlocutory revision under Art 109(1) was granted and the examination continued.

The application was refused a second time, based on objections under Art 84, 123(2), 52(1) and 56 at the end of a second OP. The same objection under Art 123(2) was present in the second refusal. A second appeal was filed, but interlocutory revision was not granted.  

The applicant requested that the decision under appeal be set aside and a patent be granted on the basis of the MR as filed during OP before the board or one of AR1** to 4**, all filed with the statement setting out the grounds of appeal concerning the first appeal, also underlying the impugned decision.

The board confirmed that the MR infringed Art 123(2). The same applied to AR 1** to 4**.

The application was refused for good.

A request for reimbursement of the appeal fee under Rule 103(1,a), for either the first or the second appeal, was also filed. The board found no legal basis for such a reimbursement.

The case is interesting in view of the request for reimbursement of one of the two appeal fees.

The proprietor’s position

The second decision of the ED repeated the same Art 123(2) objections as in the first decision. This was a misuse of the procedure foreseen by Art 109, and constituted a substantial procedural violation.

The first appealed decision was very brief, and only raised one single objection under Art 123(2). The applicant could assume that only this objection was in the way of the grant. Unexpectedly, the second decision raised additional objections, thus demonstrating that the first decision was manifestly incomplete. The second decision effectively improved the position of the ED at the cost of the applicant.

There was no proper explanation how the first decision could have been set aside if it was not wrong in substance. This showed that the ED ought to have forwarded the first appeal to the board, instead of setting it aside.

To sum it up, the “misuse of the rectification procedure by the ED to add further objections to their first Decision while maintaining the added-matter objection is considered a substantial procedural violation which justifies the reimbursement of the appeal fee”.

The fee refund should be possible in the present case even when the second appeal was not successful. The second appeal may have been avoided, and it would have been possible to finish the procedure with less costs, e.g. by withdrawing the appeal after a first appeal procedure solely on the issue of added subject-matter.

The board’s position

The board noted first that the applicant did not explain specifically which legal provisions of the EPC or possibly which instructions of the Guidelines have been violated and how, beyond stating a misuse of the possibility of an interlocutory revision under Art 109.

The board agreed with the applicant that it is not desirable and might even appear generally inequitable if an applicant were forced to pay multiple appeal fees for the examination leading to the same or similar refusal grounds. This can, at least theoretically, lead to an effective perpetuation of the examination procedure, without ever giving the applicant the chance to have its case examined by a board, while forcing it to pay multiple appeal fees.

However, the necessity to file repeated appeals and to pay multiple appeal fees may arise also without a substantial procedural violation, as demonstrated by the present case.

The purpose of Art 109 is that the ED can correct their own decisions in case of an appeal, so that the case does not have to be prolonged by a full and proper appeal procedure where the appeal appears manifestly allowable, e.g. if requests or facts have not been taken into account, and a remittal would be expected following the appeal.

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 Art 123(2). 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

The board noted 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 Art 109(2), 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 ED for examination of the outstanding substantive issues even after a successful first appeal.

Once the ED 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. It is therefore certainly undesirable, but not excluded, that the same issues are raised again in a second decision of the examining division.


Interlocutory decisions under Art 109 are regularly the cause of problems. It is clear that the purpose of it is to avoid unnecessary work for the boards. This does however not mean that the applicant should necessarily bear the costs for a second appeal.

In the present case, the procedural way taken by the ED was, to say the least, strange and unusual or as the board stated not optimal. One can thus have sympathy for the applicant’s request for reimbursing one of the two appeal fees. When the board considers that no substantial procedural violation has been committed by the ED, there was indeed no legal basis for such a reimbursement.

It is perfectly understandable that in presence of a massive objection under Art 123(2) it appears moot to decide on other topics like clarity, N and/or IS.

When a decision is set aside, the reasons for the decision are not any longer valid and further objections can be raised by an ED. If this occurs after remittal, the ratio decidendi is however binding for the ED. It is thus a priori not wrong for an ED to bring in new objections.

In the present case, it would have been better for the ED after receipt of the first appeal to transmit the case to the board as the conditions for prejudicial revision were not given as the objection of added matter was not resolved.

In the end, the application was refused by the board for a problem of added matter which was present all along the procedure. All the objections under Art 84, 54 and 56 were actually not relevant.

The second refusal and the second appeal were indeed unnecessary. It can be agreed with the board that a second refusal is always possible after interlocutory revision, but then the reasons for the second refusal should not be the same as for the first refusal.

With the present Guidelines E-XII, 7.4.1, “interlocutory revision is only allowed if the decision was not correct in substance”. The first decision on added matter was certainly correct as it eventually lead to the refusal by the board.

Attention is drawn to T 955/20 of 02.02.2022.

In T 955/20, it was held that “If the department of first instance grants interlocutory revision only to refine the written reasons which already complied with R 111(2), this may constitute a substantial procedural violation and such a substantial procedural violation may justify the reimbursement under R 103(1,a) of the appeal fee paid for a subsequent appeal”.

It is thus possible to consider that by keeping the original objection of added matter and adding further objections in the second refusal, the ED has, in the present case, “refined” its argumentation.

The appeal fee for the second appeal could have been reimbursed when taking into account T 955/20.


Art 109

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