Guidelines for interlocutory revision need revision

The European Patent Office (EPO) recently published its review of case law from 2012 and 2013. The IPKat’s eye was caught by a statement criticising the current EPO Guidelines on interlocutory revision (E-X, 7.1). (Merpel notes that when economist Paul Krugman strays from popular topics into the arcane and academic in his New York Times column, he flags this in the headline with the word “wonkish”; a similar warning might be appropriate here for those not innately excited by EPO procedural law.)

A rare photo of the IPKat with Nobel Laureate
Krugman, contemplating all things wonkish

Interlocutory revision requires EPO first instance departments to review any appeals filed against their decisions. If the appeal is well founded and overcomes the stated reasons for the decision, then the appeal is not sent to the appeal board. Instead the case is taken back up by the first instance department and the appeal is terminated.

As an example, if an application is refused for lack of novelty, and the applicant files a combination of claims 1 and 2 which is clearly novel, the Examining Division should grant interlocutory revision and begin examination of inventive step. If, however, the grounds of the decision dealt with the inventive step issue (e.g. it held that a combination of claims 1 and 2 would lack inventive step), then interlocutory revision is not granted because the amendments don’t overcome all of the stated reasons for the decision.

The Guidelines say that for interlocutory revision to apply, the amendments must not only deal with the stated grounds for the decision but also any objections raised obiter dictum in the decision, or in any earlier communication, or in oral proceedings.

Wrong, according to decision T 1060/13 which the authors of the case law review summarise as follows (edited slightly for readability):

According to T 1060/13 it is established case law of the boards of appeal that, in the event that the appeal is objectively to be considered as admissible and well-founded, the department of first instance is obliged to grant interlocutory revision; there is no room for discretion in the interests of procedural efficiency.

Official Journal Supplementary publication 5, 2014

An appeal is to be considered "well-founded" if at least the main request submitted with the appeal includes amendments which clearly meet the objections on which the decision relies. That there are other objections which have not been removed but which were not the subject of the contested decision cannot preclude the application of Art. 109(1) EPC 1973.

Thus, even if the amendments raise new objections not yet discussed, interlocutory revision must be allowed since an applicant should have the right to examination at two instances. Objections or remarks made in an obiter dictum of a decision under appeal cannot be taken into account (see e.g. T 1640/06 and T 726/10; the board disagreed with T 1034/11); the board pointed out that there were inconsistencies between the Guidelines and the established case law in this respect (Guidelines E-X, 7.4.2 – also in the current September 2013 version). 

What about Article 123(2), is it a special case? Does it give examiners extra power to refuse to consider amendments? The Guidelines thought so. In the opening sentence, before dealing with objections that might have been raised earlier in the procedure, an absolute rule is set down about interlocutory revision where Article 123(2) is breached:

If amendments made to the independent claims clearly do not meet the requirements of Art. 123(2), interlocutory revision should not be granted, but the Division should send the file to the Boards of Appeal.

This is also wrong, said the Board:

Conversely, based on the established case law, interlocutory revision must be granted if the amendments clearly overcome the grounds for refusal, even if further new objections arise […], i.e. irrespective of whether new objections under Article 123(2) EPC or whether previous objections or objections mentioned in an obiter dictum were raised by the first-instance department. The above applies equally to the Guidelines in the current version of September 2013.

Rather than this being a rogue decision, the inclusion of T 1060/13 in the OJ Supplement and the emphasis on the Guidelines being in conflict with "established case law", suggests we can expect the relevant section of the Guidelines to be heavily revised next time around. It would be welcome if the EPO could flag the online version in the meantime with a health warning.