A. Competence of the boards of appeal in the former protest proceedings - transition to the simplified procedure

Under Art. 154(3) and 155(3) EPC 1973, respectively, the boards of appeal were responsible for deciding in cases of lack of unity of invention on protests against additional search or examination fees charged by the EPO acting as International Searching Authority (ISA) under Art. 17(3)(a) PCT or International Preliminary Examining Authority (IPEA) under Art. 34(3)(a) PCT). The boards acted as department of second instance because the justification for the invitation to pay additional fees was reviewed by a review panel before the applicant was required to pay a fee to have the protest examined by a board of appeal. Decisions of the boards of appeal on protests according to the former procedure are to be found in Chapter II.B. Unity of Invention (see also Chapter IX of the 5th edition of this book).

Following the deletion of Art. 154(3) and 155(3) EPC 1973 as part of the revision of the EPC, protests are now dealt with in a one-stage procedure by review panels of the EPO (R. 158(3) EPC; see also Decision of the President of the EPO, OJ 2010, 320, and Notice from the EPO, OJ 2010, 322). The deletion of Art. 154(3) and 155(3) EPC 1973 applies to all international applications filed on or after 13.12.2007. Provisions to facilitate the simplified one-stage protest procedure were already introduced by the amendment of the corresponding provisions of R. 40 and 68 PCT with effect from 1.4.2005. The EPO dealt with the procedure to be applied between 1.4.2005 and the entry into force of the EPC changes by way of the Notice dated 1.3.2005 concerning the protest procedure under the PCT (OJ 2005, 226). According to this Notice, during the intervening period, the EPO continued to subject any invitation to pay additional fees to an internal review, prior to submission of the protest to the board of appeal. This review was in the nature of a service from the EPO. For diverging views on the status of the interim protest procedure established under this Notice see in particular W 26/06 and W 20/06, which are reported, along with further references, in Chapter IX.A.1 of the "Case Law of the Boards of Appeal of the EPO", 6th edition 2010.

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