The applicant filed an appeal against the decision of the Examining Division (ED) refusing his application on the ground of lack of novelty over documents D1 and D2.
The applicant requested that the decision under appeal be set aside and that the appeal fee be reimbursed. He justified the request for reimbursement as follows:
The present application (called “divisional 2”) was a divisional application of European patent application No. 02 014 905 (called “divisional 1”), which was in turn a divisional application of European patent application No. 99 125 620. In the case of “divisional 1”, the ED had issued a communication dated 30 January 2006, indicating that the examination proceedings were adjourned until the Enlarged Board of Appeal (EBA) had given its decision in case G 1/05 concerning the validity of a divisional application. At the material time, there existed a possibility that “divisional 1” had to be considered as never filed and, thus, non-existing. In this case, “divisional 2”, i.e. the present application, could also be considered as never filed and non-existing. The existence of the present application depended also on the decision in case G 1/06. Therefore, the validity of the present application was uncertain. By refusing the present application instead of adjourning the examining proceedings until the EBA had taken its decision, the ED had made a substantial procedural violation. Any discussion of the present application in appeal proceedings, so the appellant argued, was premature, since it could not be established with certainty at this stage, whether or not the present application was validly filed.
Following the appeal, the ED rectified its decision to refuse the application pursuant to A 109(1). The ED did not allow, however, the appellant’s request for reimbursement of the appeal fee, this request being forwarded to the board of appeal for a decision.
The Board did not allow the request:
[3] According to R 103(1)(a), the appeal fee is reimbursed in the event of interlocutory revision, if such reimbursement is equitable by reason of a substantial procedural violation.
[3.1] It has to be investigated, therefore, whether a substantial procedural violation occurred in the present case during the examination proceedings.
[3.2] The ED refused the present application under A 97(2) on grounds of lack of novelty of the process according to claims 1 to 3 in respect of the disclosure of D1. The ED held that, although the wording of claim 1 of the present application was different from the wording used in D1, there existed no technical difference between the process set out in claim 1 of the present application and the process disclosed in D1. In the decision under appeal, the significance of the disclosure of D1 was discussed in detail […].
[3.3] The board is satisfied that the reasons which led to the refusal of the application were both understandable and adequate, so that the decision was sufficiently reasoned in accordance with R 111(2). In this respect, there is no evidence that the decision under appeal is tainted with any flaws.
[3.4] In the appellant’s view, the ED committed a substantial procedural violation by refusing the application, instead of adjourning the examining proceedings until such time when the EBA had given in consolidated proceedings G 1/05, G 1/06 and G 3/06 its “decision concerning the validity of the present divisional application as for the parent application” […].
[3.5] The board notes that the alleged procedural violation is completely unrelated to the ground of lack of novelty of the process of claims 1 to 3, which was decisive for the refusal of the application. Consequently the outcome of case G 1/05 was not “of the highest importance” for the present application, as the appellant erroneously believed […]. For this reason, the board cannot subscribe to the notion, that the ED committed objectively a substantial procedural violation by not adjourning the examination of the application until such time, when the EBA gave its decision in consolidated cases G 1/05 and G 1/06 and G 3/07 (sic).
[4] Regarding the conditions for staying proceedings before the EPO first-instance departments (here: ED) in connection with consolidated cases G 1/05, G 1/06 and G 3/06, the board refers to the Notice from the EPO dated 1 September 2006 (see OJ 2006, p. 538 - 539).
[4.1] According to said notice, examination proceedings were stayed until issuance of the decision of the EBA only where the two following conditions are met:
(i) the stay of proceedings has explicitly been requested by the party to the proceedings, i.e. the applicant; and
(ii) the outcome of examination proceedings depends in the opinion of the ED entirely on the decision of the EBA.
Furthermore, the notice contained the following statement: “All cases affected by decision T 39/03 will henceforth be stayed only where the two abovementioned conditions are fulfilled.” (see Notice from the EPO, OJ 2006, p. 539, paragraphs 3 to 6; emphasis added by the board).
[4.2] The board notes that in the present case, the applicant (now appellant) did not make an explicit request for staying the examination proceedings. The ED on its part did not consider, that the outcome of the examination proceedings depended entirely on the decision in consolidated cases G 1/05, G 1/06 and G 3/06. Therefore, neither the first nor the second condition for staying the examination proceedings set out in the Notice from the EPO dated 1 September 2006 was met.
[4.3] Under these circumstances, there existed no legal basis for the adjournment of the examination proceedings in the case of the present application. Since the course of action adopted by the ED was in full conformity with the Notice from the EPO dated 1 September 2006, there can be no question of a procedural violation.
[5] In the absence of a substantial procedural violation, no reimbursement of the appeal fee is possible under R 103(1)(a).
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