8.4.3 Examining division should have rectified decision

In T 647/93 (OJ 1995, 132) it was pointed out that when the examining division did not make use of the possibility of granting interlocutory revision after the mistake had been pointed out in the grounds of appeal, this was normally deemed to constitute a procedural violation justifying the reimbursement of the appeal fee (see also T 808/94, T 898/96, T 861/03, T 1113/06, T 971/06, J 7/07; see also T 685/98, OJ 1999, 346). In T 183/95 no reimbursement was ordered, however. The board in this case pointed out that interlocutory revision could be granted at the discretion of the department of first instance when it was considering whether the appeal was "well founded". In this case, the remittal of the appeal could not be said to have been manifestly wrong from the procedural point of view (see also T 536/92).

In T 794/95 the board took the view that, under the circumstances of the case, the examining division should have rectified its decision under Art. 109(1) EPC 1973. The board did not, however, consider it equitable to order the reimbursement of the appeal fee, since the examination procedure up to the decision under appeal was not tainted with any failure and the necessity for the appellant to file an appeal emerged exclusively from the substance of the decision, not because of any procedural shortcomings up to this stage and equally not from the later incorrect handling of the appeal by the examining division (i.e. the failure to rectify its decision).

In T 685/98 (OJ 1999, 346) the board held that where a fundamental procedural right had manifestly been violated in a refusal pursuant to Art. 97(1) EPC 1973, or in the foregoing examination procedure, a further substantial procedural violation occurred if the examining division failed to grant interlocutory revision on appeal (following T 647/93, OJ 1995, 132), since such a right had to be safeguarded irrespective of the substantive merits of the case.

In T 898/96 the board took the view that, as soon as the applicant approved in the notice of appeal the text of the application as specified previously in a communication under R. 51(4) EPC 1973, there was no reason why the patent should not have been granted, even if the applicant did not approve this text before filing the appeal. Thus the decision of the examining division to refuse the application having regard to Art. 113(2) EPC 1973 should have been rectified by way of interlocutory revision. The failure to rectify such a decision in this way was a substantial procedural violation. However, the board did not consider the refund of the appeal fee to be equitable, for the very reason that the applicant did not approve this text of the application until he filed an appeal.

In T 704/05 the board found that the examining division could have set its decision aside by way of interlocutory decision pursuant to Art. 109(1) EPC 1973. However, given that the examining division was expressly precluded from giving its reasons for not granting interlocutory revision, it was not open to the board to criticise this omission. The mandatory but necessarily silent judgment made pursuant to Art. 109(1) EPC 1973 as to whether an appeal refuted the reasons for a refusal was not an exercise of discretion and ipso facto left no room for an inquiry as to whether discretion had been properly exercised. The board was aware that a number of decisions of the boards of appeal had taken a different view on this point - to the extent of sometimes castigating such omission as a substantial procedural violation - but respectfully suggested that these decisions had not given sufficient weight to the implications of the silence imposed on the examining division by Art. 109(2) EPC 1973.

The board in case T 1982/07 said that it is fundamental to the principle of fair trial that in the examination an applicant, when confronted with new prior art documents, is not only given the right to be heard, but also the right to react thereto by amending the claims in order to overcome the prior art references. In the case at issue, both the examining division and the applicant took the view that the newly introduced document D3 was highly relevant prior art likely to prejudice the patentability of the application. When being confronted with such a highly relevant document, it would have been necessary to give the applicant the opportunity to amend the claims, if need be by introducing features of the description. It was therefore erroneous of the examining division to exercise its discretion under R. 86(3) EPC 1973 (now R. 137(3) EPC) in the way it did, as this did not allow the applicant to react appropriately, but rather tied its hands to an extent that was neither mandated by procedural efficiency nor justified in the light of the prior art documents cited. The examining division thus exercised its discretion in an unduly restrictive manner, thereby committing a substantial procedural violation. Against this background, it would have been incumbent on the examining division to rectify the decision pursuant to Art. 109(1) EPC, but this was not done. The board ordered the remittal to an examining division that had not previously dealt with this case.

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