T 0139/87 - Interlocutory revision is compulsory, if appeal is "well founded" - #71

Citation rank: 71
No. of citations: 67

T 139/87 deals with interlocutory revision under Art. 109 EPC, which states that - in ex parte proceedings - the organ of first instance shall rectify its decision, if the corresponding appeal is admissible and well founded.

In the underlying examination case, the examination division (ED) had refused the  application, because an amendment to claim 1 went beyond the original disclosure (Art. 123(2)). The ED, however, indicated that the claims were otherwise new and inventive.

The applicant appealed and filed, together with its Grounds of Appeal, amended claims that clearly met the objections that led to the refusal. Nevertheless, the ED did not apply interlocutory revision and the case went to the Appeal Board for further handling and decision.

The Board recognised that the objections, which led to the refusal, were overcome and that the ED was apparently of the oinion that there were further deficiencies outstanding (most likely a missing two-part form of the independent claim; otherwise the ED would/should have rectified its decision). The Board further stated that interlocutory revision is not only to be applied if the request on appeal is clearly and fully allowable (as was stated in the then current Guidelines), but it would suffice that the objections, which led to refusal, were overcome. It stated:

"The Board is unable to agree with the position expressed in the Guidelines for Examination in the European Patent Office (Part E, Chapter XI, 7, final paragraph) according to which interlocutory revision may take place only where the application fulfils all (see English or German version) the requirements of the EPC." (point 4 of Reasons)

The Board based its opinion on the fact that - according to Art. 109 - interlocutory revision shall be applied, "if the department whose decision is contested considers the appeal to be admissible and well founded". For an appeal to be well founded, it would be sufficient, if it overcame the objections on which the contested decision was based. Therefore, the presence of further deficiencies would not allow the first instance to not allow interlocutory revision.

The Guidelines were meanwhile changed and now mention that the first instance must rectify its decision, if it considers the appeal admissible and well founded (GL 2017, E-XII, 7.1, first sentence; note: they mention, however, the "obligation or possibility" of rectification, ibid., third sentence).


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Headnote:

1. An appeal by an applicant for a European patent is to be considered well founded within the meaning of Article 109(1) EPC if simultaneously amendments to the application are submitted which clearly meet the objections on which the contested decision relies.
2. In this case, the department that issued the contested decision must rectify that decision (contrary to the Guidelines E-XI,7). Irregularities other than those that gave rise to the contested decision do not preclude rectification of the decision.

The full text of the decision can be found here.