http://ipkitten.blogspot.com/2022/08/contradictions-between-guidelines-and.html
A recent decision from the Boards of Appeal considered when a first instance department should reconsider a decision before sending an appeal to the Boards of Appeal (interlocutory revision) (T 682/22). The decision highlights the self-contradictory stipulations in the Guidelines for Examination on interlocutory revision. Parts of the Guidelines also contradict the established case law. The Board of Appeal chose to follow the established case law as opposed to the Guidelines.
Case Background
T 682/22 related to an appeal the decision of the Examining division to refuse the application EP3133864 for lacking novelty. On appeal, the applicant amended the claims to subject matter that the Examining Division had previously indicated as being novel. The key question before the Board of Appeal was therefore whether the Examining Division should have granted interlocutory revision as opposed to sending the case to the Boards of Appeal.
| Unimpressed by contradictions in the Guidelines |
Contradictions in the Guidelines
The Board of Appeal in the case noted contradictions in the Guidelines for Examination on when interlocutory revision is applicable. The Guidelines indicate that interlocutory revision should apply when an appeal is “well-founded”, including in cases where the claims of the main request clearly overcome the Examining Division’s grounds for refusal (E-XII, 7.1). The Guidelines also confirm that this principle applies even in cases where the claim amendments of the Main Request give rise to new objections (E-XII, 7.2.).
The Guidelines indicate elsewhere, however, that an appeal should be sent to the Boards of Appeal in cases where amendments add matter, regardless of whether the grounds of refusal are overcome (E-XII, 7.4.2). The Guidelines further stipulate that, in arriving at a decision on interlocutory revision, the Examining Division should take account of all the grounds or rejection referenced in the refusal decision (E-XII, 7.2), including those that had previously been overcome by the applicant. Both of these stipulations contradict the overarching principle that interlocutory revision should be granted if the grounds of refusal are overcome in the statement of grounds of appeal.
Contradictions in the Case Law
The Board of Appeal in T 682/22 cited the previous case law that interlocutory revision should be granted if the grounds of refusal are overcome, regardless of whether new objections arise (T 139/87, T 691/18 and T 1060/13). The Board of Appeal also noted, however, the contradictory decision T 2445/11. In T 2445/11 the Board of Appeal found the approach adopted by previous Boards to be “too rigid, [leaving] no room for a pragmatic assessment of the situation with a view to procedural efficiency”.
The Board of Appeal nonetheless found the reasoning of T 2445/11 unconvincing: “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, Article 109(1) EPC obliges the examining division to rectify its decision and continue examination of the application.”
The Board of Appeal thus found, in line with the established case law but in contradiction to some sections of the Guidelines, that the Examining Division in the case in question should have granted interlocutory revision (but “for whatever reason, they did not do so” (r. 2.4.7)). The case was therefore remitted directly back to the Examining Division.
The decision in T 2445/11 is thus a timely reminder that the Guidelines are just that, Guidelines. The Boards of Appeal have the right to follow the case law and their own interpretation of the EPC.
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