2. Jurisdiction of the boards of appeal

The PCT does not expressly provide for appeal or petition during the international phase (cf. WIPO PCT Applicant's Guide – International Phase, para. 6.054). The sole exception under the EPC 1973 was the boards' competence to decide on protests against additional search or examination fees charged by the EPO acting as ISA (Art. 17(3)(a) PCT and Art. 154(3) EPC 1973) or IPEA (Art. 34(3)(a) PCT and Art. 155(3) EPC 1973) after a finding of lack of unity of invention. Thus, in J 24/99 the Legal Board confirmed that, apart from protest cases for which the boards' responsibility explicitly derived from Art. 154(3) and 155(3) EPC 1973, the jurisdiction of the boards was limited by the EPC, in particular Art. 21 and 106 EPC, which do not confer any jurisdiction on them to review actions taken by the EPO as IPEA (see also J 15/91, OJ 1994, 296; J 14/98; J 10/15).

In case T 506/08 the EPO, acting as ISA, had issued a declaration of non-establishment of the ISR under Art. 17(2)(a) PCT. The examining division did not carry out a further search on the amended application, which it subsequently refused for lack of inventive step. At the appeal stage the applicant filed a request for a (partial) refund of the international search fee. However, the board declined jurisdiction to deal with the request. The guarantee of due process of law (cf. G 3/08 date: 2010-05-12, OJ 2011, 10), as invoked by the appellant, did not mean that each and every claim against the EPO was a matter for the boards (e.g. J 14/87, OJ 1988, 295; with reference to Art. 9 EPC 1973). Neither the PCT nor the Agreement between the European Patent Organisation and WIPO of 31 October 2001 provided for a refund in such a case.

Once the Euro-PCT application enters the regional phase before the EPO the appeal procedures provided for under the EPC supplement the provisions of the PCT (J 20/89, OJ 1991, 375). See also in this chapter VI.3.

Board of Appeal decisions on protests according to the former procedure are to be found in chapter II.B. "Unity of Invention". The current protest procedure under R. 158(3) EPC and preceding interim procedure are referred to in chapter II.B.1.