T 0758/23 (Tropical lagoon II/CRYSTAL LAGOONS) of 04.11.2025

Article 109(2) EPC - requirement for remittal without comments (no - an internal note added to the electronic file of a related case)
Remittal to the department of first instance (yes)
Procedural irregularity that raises serious concerns (yes - replacement of the whole examining division for no apparent reasons at the stage of interlocutory revision)

[W]hile reviewing the documents in the electronic file in related case T 759/23, the Board became aware of an internal note not visible to the public, acting as some sort of votum discussing the appeal. It was added six weeks after the grounds of appeal (see point V of the facts). This was in the three-month period in which the examining division had to consider whether to grant interlocutory revision in that case. The note analysed the allowability of the refused request and drew negative conclusions on the persuasiveness of the appellant's arguments. It also addressed aspects and evidence not mentioned in the decision or the grounds of appeal. For example, the note analysed documents which the examining division did not use in their reasoning. Subsequently, the case was remitted to the Board.
The Board notes that the composition of the examining divisions at the stage of interlocutory revision was identical in both cases, that the claimed subject-matter is closely related, and that both decisions raised a similar objection under Article 56 EPC. On that basis, the Board judges that there is a sufficiently close connection between the two cases to conclude that the internal note in case T 759/23 was intended to serve as a sort of votum for the assessment of inventive step in the present case as well. (See point 5 of the reasons)
It is clear that this internal note containing comments and conclusions on the substance of the case violates the requirement to remit the case "without comment". In particular, by providing comments on the merits after issuing the decision, the examining division went beyond the role assigned to it under Article 109(2) EPC and thereby undermined the devolutive effect of the appeal. The Board judges that this procedural flaw constitutes a substantial procedural violation justifying a remittal to the examining division for further prosecution (Article 111(1) EPC and Article 11 RPBA). (See point 6 of the reasons)
Moreover, this case has another connected peculiarity in that, four days after filing the grounds of appeal and by the time the internal note was drafted, the entire examining division had been replaced. An identical replacement took place at the same time in case T 759/23, with the compositions of the examining division, both before and after the replacement, being the same. It thus appears that the internal note, which is unsigned, was drafted by one of the new members of the examining division to assist the other two members in deciding whether to rectify the decisions in case T 759/23 and in this case.
Thus, this note as well as the whole procedure under Article 109 EPC did not even serve the purpose of an interlocutory revision which is to allow for a rectification of the contested decision by the examining division that has taken this decision, but rather represented a complete re-examination of the file. (See point 9 of the reasons)
[T]he arbitrary replacement of the examining division is not supported by a reasonable interpretation of the Guidelines for Examination. The Board considers that this interpretation should not be expanded to include arbitrary "necessary steps". Just because the President of the Office or any delegee has the power to do something does not mean that they should do it. It may legitimately be expected of an Office that decides on the grant of significant rights to applicants that procedural steps are not exercised arbitrarily. Rather, such steps should be subject to reasonable safeguards in order to avoid the perception that they are exercised for reasons unrelated to the purpose of the procedure - here, to check whether it is immediately apparent from the reasons given in the grounds of appeal that the decision cannot stand. (See point 15 of the reasons)