The plaintiff paid 5 additional search fees and then asked for their refund.
In an interlocutory decision , the Examining Division partially allowed this application, ordering the reimbursement of 4 search fees. This case concerns the appeal against that interim decision.
The appeal was first sent to the Legal Board of Appeal, with case number J24 / 12, and then transmitted to Chamber 3.4.01, the Grand Chamber having meanwhile decided ( G / 11 ) that these questions fell within the competence of the Technical Chambers.
The Chamber quashes the decision on procedural grounds. The reasons for the interlocutory decision are based on a comparison with D3 on which the plaintiff did not have the opportunity to comment. The Chamber notes that since 2014 the Guidelines ( C-III 3.3 ) explicitly provide that before any interim decision the applicant must be informed of the preliminary opinion of the examining division in a notification under Article 94 (3) EPC.
The Chamber therefore remits the case to the Examining Division and orders the reimbursement of the appeal fee.
It takes this opportunity to point out that the operative part of the future decision should clearly indicate to what extent the examining division is entitled to the plaintiff’s specific requests or not, and whether an independent remedy is provided for.
On this last point, the Chamber states that the admission of an independent appeal against an interlocutory decision ( Article 106 (2) EPC ) is a decision of the Examining Division, which establishes the possibility of filing an appeal, and which must therefore be included in the operative part of the decision.
It should be noted that the Examining Division rejected the request for lack of unity and clarity, and that the same Board in T2482 / 12 confirmed the lack of hindsight on the basis of D3.