Résumé de EPC2000 Art 109 pour la décision T2381/19 du 20.06.2023

In T 2381/19 the board dealt with the second appeal filed by the applicant against the refusal of the application by the examining division. In the first decision, the examining division had refused the application based on Art. 123(2) EPC, against which the applicant had appealed. The examining division had granted interlocutory revision by issuing a separate decision, which did not revise the initial refusal decision in the sense of immediately replacing it with a decision dealing with the substantive issues, but only set the initial refusal decision aside and continued the examination proceedings. In its second decision refusing the application, the examining division had maintained the objections under Art. 123(2) EPC and added additional objections (under Art. 84, 52(1) and 56 EPC), although the requests had remained unchanged. The applicant had then appealed the second refusal decision, requesting among other things the reimbursement of the second appeal fee. The appellant had argued that the "misuse of the rectification procedure by the examining division to add further objections to their first decision while maintaining the added-matter objection had to be considered a substantial procedural violation which justified the reimbursement of the appeal fee". In T 2381/19 the board confirmed the examining division's second refusal, based on Art. 123(2) EPC objections. The question that remained was then whether there were good reasons to reimburse the second appeal fee under R. 103(1)(a) EPC. The board did not see a substantial procedural violation committed by the first instance in the procedure leading to the second refusal decision. In the present case the division did not only maintain the objections under Art. 123(2) EPC, but also raised in particular inventive step objections. In view of these objections, the applicant could not have reasonably expected the grant of the patent without a further refusal following the decision to grant the interlocutory revision. Put differently, already these additional inventive step objections made the payment of the further appeal fee necessary. Moreover, the board noted that, even assuming for the sake of argument that the division would not have allowed the interlocutory revision, the payment of a second appeal fee might still have become unavoidable. Since the first refusal decision only dealt with added subject-matter, it would still have been quite likely that the case would have been remitted to the examining division for examination of the outstanding substantive issues even after a successful (first) appeal. The board further stated that, after granting interlocutory revision, once the examining division reopens the examination, it is formally not prevented from re- examining all the issues which were already the subject of the previous decision. The principle of prohibition of reformatio in peius does not apply in this situation. The board concluded that there was no basis for the reimbursement of the second appeal fee, as no procedural violation was apparent and a reimbursement also did not appear equitable for any other reasons.