The decision is interesting in that the board found the Guidelines inconsistent with case law when it comes to Interlocutory Revision under Art 109.
Brief outline of the case
The applicant appealed the decision of the ED that claim 1 of the sole request was lacking N over D5, PA under Art 54(3).
The applicant submitted that amended claim 1 in appeal was based on a combination of previous claims 1, 4 and 5, which had been deemed to be allowable in the decision under appeal, cf. Reasons 1.2 of the appealed decision. Former claims 4 to 6 have been cancelled.
In addition, former independent claim 14 (amended independent claim 11) has been brought in line with amended independent claim 1.
The applicant submitted that, as already acknowledged by the ED in the appealed decision, document D5 did not disclose the features of the characterising portion of claim 1 as amended, namely the ones of former claims 4 and 5 as well as former claims 17 and 18.
The appealed decision contained novelty objections under Art 54(3) with respect to independent claims 1 and 11 and dependent claims 2 to 4, 6 to 13, 15 to 17 and 19 to 25 of the then sole request.
Furthermore, in point 3 of the annex to the summons (with D5 being wrongly referred to as D4, cf. also point 8 of the Facts and Submissions of the appealed decision), the ED had made the following statements with respect to the features of dependent claims 5 and 18 subject to the appealed decision:
It is noted that claims 6 and 20 are not disclosed by D4 (=D5). It appears hence that the combination of claims 1+4+5+6 currently on file, due to the dependency of claim 6, which depends on 5, which depends on 4, which finally depends on 1, would be new over D4. Claim 15 should be amended accordingly.
The board noted that it is established case law of the BA that other objections which arise in the current request but which were not the subject of the contested decision cannot preclude the application of Art 109(1), cf. T 691/18, Reasons 2, citing T 139/87, and Reasons 4; T 1060/13, Reasons 4.1.
Thus, even if the amendments raise “new” objections not previously discussed, interlocutory revision must be allowed since the main purpose of this legal instrument is to shorten the appeal proceedings to the benefit of procedural expediency and economy and to avoid unnecessary workload for the Boards of Appeal in the interest of both the appellant and the EPO, see e.g. T 1060/13, Reasons 4.1.
The conclusions are in principle also reflected in the Guidelines for Examination in their edition of March 2022. See e.g. chapter E-XII, section 7.1, 4th paragraph.
Inconsistency in the Guidelines according to the board
For the board, some passages of those Guidelines are not consistent with those conclusions.
Art 20(2) RPBA20 stipulates that “[i]f, in its decision, a Board gives a different interpretation of the Convention from that provided for in the Guidelines for Examination, it shall state its grounds for doing so if it considers that the decision will be more readily understood in the light of such grounds”.
Therefore, this board – as did the deciding board in case T 1060/13, cf. Reasons 4.3 – considers it appropriate to point out that there are (still) some significant inconsistencies between the current Guidelines and the established case law as to the interpretation of Art 109(1).
More specifically, according to those Guidelines, see e.g. chapter E-XII, section 7.4.2, 6th paragraph, “[i]f amendments made to the independent claims clearly do not meet the requirements of Art. 123(2), interlocutory revision is not granted, but the division sends the file to the boards of appeal. If there are doubts as to whether the amendments meet the requirements of Art. 123(2) or the amendments clearly meet the requirements of Art. 123(2), the division checks whether the amended claims overcome the ground(s) for refusal”.
Moreover, in arriving at a decision on granting interlocutory revision, according to those Guidelines E-XII, section 7.4.2, 5th paragraph, the examiner is supposed to take into account all the grounds mentioned in the original decision, including the main or supporting arguments already raised in previous objections to patentability to which the applicant has had an opportunity to respond and to which reference is made in the grounds of refusal (e.g. objections mentioned in previous communications, during personal consultation or at oral proceedings).
Conversely, on the basis of the established case law, interlocutory revision must be granted if the amendments clearly overcome the grounds for refusal, even if further new objections arise, i.e. irrespective of whether new objections under Art 123(2) or whether previous objections referenced in the appealed decision were raised by the first-instance department.
In that regard, the board mentioned T 2445/11, which hints at a different approach and disagrees with the approach adopted in T 1060/13 as possibly being “too rigid, as it leaves no room for a pragmatic assessment of the situation with a view to procedural efficiency and may result in a needless repetition of the first-instance proceedings”, cf. Reasons 8. This decision is also referred to in the Guidelines, cf. E-XII, section 7.4.2.
However, the present board does not follow the conclusions drawn in case T 2445/11. The fact that the first-instance proceedings must be “repeated” is a consequence of the very fact that the examining division decided to refuse an application on specific grounds – and not on others – and that these specific grounds are overcome with the appeal. In such a situation and in line with the established case law, Art 109(1) obliges the ED to rectify its decision and continue examination of the application.
Hence, for the board, the established case law and the current Guidelines are inconsistent with each other.
As to the present case, it is apparent to the board that, in view of the statements made by the ED, the addition of at least feature (d) (taken from former claims 5 and 18 to the independent claims clearly overcomes all the objections raised in the appealed decision.
It follows that the appeal is “well founded” within the meaning of Art 109(1). There is also no apparent reason to contest that the appeal is “admissible” within the meaning of Art 109(1).
The ED should therefore have indeed rectified its decision and continued with the examination of compliance with the requirements of the EPC. However, for whatever reasons, they did not do so.
It follows from the above that the subject-matter of independent claims 1 and 11 of the main request is new under Article 54(3) in view of document D5 and that the examining division should have rectified its decision.
In the board’s view, this represents a “special reason” within the meaning of Art 11 RPBA20 for a direct remittal of the case.
The board seems to have a point when it considers not in accordance with Art 109 that, should the amended requests infringe Art 123(2), the file should be send to the BA, irrespective of the fact that the amendments overcome the objections originally raised. Why is there an exception for Art 123(2)?
In T 1060/13, see Reasons, Point 4.3, the board already queried this practice under the then valid Guidelines and referred to Art 20(2) RPBA07.
Art 20(2) RPBA07 is identical to Art 20(2) RPBA20
At least the present board took Art 20(2) RPBA20 into account when criticising the Guidelines and did not ignore it as was the case in the famous T 1444/20.
Established case law in matters of interlocutory revision
In most decisions the boards have expressed the fact that there is a duty to grant interlocutory revision if the reasons for the refusal have been overcome in the requests filed with the appeal.
In few cases, the boards have considered that not granting interlocutory revision boils down to a substantial procedural violation, cf. T 2225//21 and 2445/11 (op. cit.).
Established case law and amendment of the Guidelines
Even if some part of the Guidelines is not in accordance with established case law, there might still be left quasi unamended or only amended after a long time.
I am thinking here at the former essentiality test, cf. H-V, 3.1, which is still in the Guidelines in spite of the numerous decisions criticising it. Adding that the gold standard, cf. G 2/10, does not change the fact that the is still present in the Guidelines.
How long did it take to remove the purposive selection under novelty, cf. G-VI, 8 (ii)?