8.3.5 Error of judgment by a department of first instance

A number of decisions discussed whether an error of judgment by a department of first instance could be regarded as a substantial procedural violation justifying reimbursement of the appeal fee (T 19/87, OJ 1988, 268; T 863/93; T 107/05; T 1078/07).

Normally there is no procedural violation justifying reimbursement of the appeal fee if the wrong procedure is adopted in a situation where the EPC does not lay down clearly what procedure is to be followed and the case law has not yet established any settled practice (T 234/86, OJ 1989, 79).

In T 208/88, OJ 1992, 22 the board held that taking a different line from an as yet isolated appeal decision - as opposed to established board of appeal case law - could not be regarded as a substantial procedural violation.

The fact that the board had come to a different conclusion from the department of first instance did not by itself mean that the latter had committed a substantial procedural violation (T 87/88, OJ 1993, 430; T 538/89, T 182/92). In T 208/00 the board considered that the department of first instance had to be granted a certain degree of latitude in exercising its power of discretion, which in this case it had not overstepped in a clearly inappropriate manner. It stated that it was not equitable to reimburse the appeal fee, especially as under the established case law of the boards of appeal (see T 860/93) not even "a gross error of judgment" by the department of first instance was regarded as justifying such reimbursement.

In decision T 875/98 the board noted that the Convention did not contain any rule of procedure which imposed on an opposition division an obligation to abide, in its decision concerning a certain case, by a decision in a different case. It held that a single decision issued by an opposition division did not establish a "case law" which had to be adhered to in another opposition case even if the subject­matter of the two respective cases was closely related.

In T 367/91 the board stated that to base a decision only on a wrong assessment of prior art and/or the claimed invention had to be regarded as a substantive error, not a procedural violation (see also T 144/94 and T 12/03).

In T 687/05 the board held that the fact that the decision under appeal was based on an incorrect interpretation of Art. 100(c) EPC 1973, due to its reasoning being based on examination of the requirements under Art. 76(1) EPC 1973 with respect to the parent application, did not constitute a "procedural" violation, but was simply an error in the application of the law. Thus, the requirements of R. 67 EPC 1973 for reimbursement of the appeal fee were not fulfilled, at least for this reason.

In T 17/97, the appellant's request for reimbursement of the appeal fee was based on the fact that the opposition division had disregarded document (5) pursuant to Art. 114(2) EPC 1973 and R. 71a(1) EPC 1973. In the board's judgment this was caused by an erroneous assessment of the relevance of document (5). Such a misinterpretation, by its very nature, did not constitute a procedural violation within the meaning of R. 67 EPC 1973.

It does not amount to a procedural violation if the examining division wrongly finds that a claim is not sufficiently clear to comply with the requirements of Art. 84 EPC 1973, even where there has been a possible error of judgment and failure to seek clarification from the appellant (T 680/89).

The misinterpretation of a document does not constitute a procedural violation (T 1049/92, T 162/82, OJ 1987, 533). In T 588/92 the board pointed out that a different opinion on the specialist knowledge to be applied when interpreting the technical content did not amount to a procedural violation. Even a gross error of judgment on the part of the examining division does not justify reimbursement of the appeal fee (T 860/93, OJ 1995, 47). Misinterpretation of a letter to the EPO department concerned constitutes an error of judgment and not a substantial procedural violation (T 621/91).

In J 9/05 and J 18/05 the board had to decide on the Examining Division's decisions that R. 69(1) EPC 1973 communications were deemed to have been duly delivered to the addressees on the tenth day following its posting. The board held in each case that whilst the examining division had evaluated the evidence as to the postal delivery incorrectly, this amounted to an error of judgment only and could not be characterised as a procedural non-compliance, which was a prerequisite for the application of R. 67 EPC 1973.

In T 248/00 the board decided that, where a late submission was not admitted, an irregularity had taken place if the department had exercised its discretion incorrectly, that is to say on the basis of irrelevant or arbitrary considerations. The board held that, even if the non-admission might ultimately prove to be incorrect, such application of the law did not amount to a substantial procedural violation. The issue was, rather, whether the opposition division’s discretion had been incorrectly exercised in not admitting a late-filed request.

In T 494/07 the board held that if two apparently similar case constellations were decided differently, this could at most be regarded as an error of judgement. In the case at issue, the board held that not following an earlier board decision therefore did not constitute a substantial procedural violation.

In T 970/10 the board held that an incorrect assessment of a document with regard to its date of availability to the public related to a factual error in respect of the substantive requirements to be met by the "state of the art" in accordance with Art. 54(2) EPC (which is included in Part II of the EPC, "Substantive Patent Law"), and not to an error in respect of procedural law. A decision relying on a post-published document which did not form part of the state of the art under Art. 54(2) EPC did not constitute a substantial procedural violation justifying reimbursement of the appeal fee.

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