Inconsistency between EPO’s Guidelines and Case Law

Published on: 16 January 2014
by Dr. Christian Köster, Patent Attorney at Dennemeyer & Associates, Munich

Under which circumstances shall an interlocutory revision be granted in European patent application procedures? The EPO’s Guidelines and the EPO’s Case Law presently answer this question differently:

In case a European patent application is refused, the applicant may appeal the negative decision. Together with the appeal, further arguments and/or amendments can be filed, which might be considered by the Examining Division to overcome the patent hindering deficiencies. Then, it is the Examining Division itself which considers the appeal admissible and well-founded. The mandatory legal consequence in such a scenario is an interlocutory revision, which allows the procedure to continue before the Examining Division instead of being forwarded to a Board of Appeal.

In decision T 1060/13 of 16 December 2013, a Board of Appeal of the EPO emphasized that “in the event that the appeal is objectively to be considered as admissible and well founded, the first-instance department is obliged to grant interlocutory revision” (at no. 4.1 of the Reasons). This applies even in the case where other objections remain, or new ones may arise, where the objections are not part of the contested decision. In this respect, the Board held that an obiter dictum in the appealed decision does not form an integral part of the reasons for refusing an application, so that such an obiter dictum must not preclude an interlocutory revision. Remarkably, the Board of Appeal disagreed in this regard with an earlier decision (T 1034/11 of 30 November 2012).

As a consequence of its findings, the Board of Appeal identified discrepancies between the EPO’s Guidelines and the EPO’s Case Law. Specifically, according to the current version of the Guidelines, an interlocutory revision should not be granted when only the grounds for refusal are overcome, but the previously raised objection or objections mentioned in obiter dicta (Guidelines, E-X, section 7.4.2) aren’t overcome. The Board of Appeal in T 1060/13 strongly disagrees with this view and states that there is a clear inconsistency between the Guidelines and the established case law (at no. 4.3 of the Reasons). Obviously, the Board of Appeal would have much more liked the Examining Division to grant the interlocutory decision. Refusing the same was actually seen as a breach of the principle of procedural efficiency – the author of this article hopes that this principle is better observed in the future.