CLR IV E 2.2.2.B Examples where the communication was not an appealable decision

The case law of the boards of appeal has established that the following are not regarded as appealable decisions taken by other EPO departments:

(i) A request under R. 89 EPC 1973 for correction of a contested decision. Not until the request has been decided at first instance can the matter be referred to the board (J 12/85, OJ 1986, 155).

(ii) The preparatory steps referred to in Art. 96(2) EPC 1973 and R. 51(3) EPC 1973 (T 5/81, OJ 1982, 249).

(iii) A communication under R. 57(1) EPC 1973 (T 222/85, OJ 1988, 128), or R. 69(1) EPC 1973 (J 13/83). See also Chapter III.K "Formal aspects of decisions of EPO departments".

(iv) A communication from the opposition division finding that an opposition has been validly filed, and stating that the decision will be taken on that point at the oral proceedings (T 263/00).

(v) An order by a director of a department of first instance (such as an opposition division) rejecting an objection to a member of the division on the ground of suspected partiality. The composition of the division could, however, be challenged on such a ground in an appeal against its final decision or against a separately appealable interlocutory decision under Art. 106(3) EPC 1973 (G 5/91, OJ 1992, 617).

(vi) A "decision" by a director on a request for inspection of file. Only the examining division charged with the technical opinion (Art. 25 EPC 1973) or the formalities officer pursuant to the Notice of the DG2 Vice-President (OJ 1984, 317, revised and supplemented in OJ 1989, 178 and OJ 1999, 504) has the competence to decide on a request for inspection of file. Such a 'decision' under appeal is therefore void ab initio and the appeal inadmissible (J 38/97; see also T 382/92).

(vii) A letter bearing the letterhead of an EPO Directorate-General and signed by an EPO Vice-President, if it is evident from its content that it does not constitute a decision and from its form that it does not emanate from any of the departments listed in Art. 21(1) EPC 1973 (J 2/93, OJ 1995, 675).

(viii) The minutes of oral proceedings (T 838/92). A correction to minutes of oral proceedings made on the initiative of the opposition division was held not directly appealable in T 231/99.

(ix) A communication from a formalities officer primarily dealing with the patentee's request to stay the opposition proceedings and to remit the case to the examination division for a decision on the request for correction under R. 89 EPC 1973 (T 165/07).

(x) A communication under R. 71(3) EPC. This is not intended to terminate the examination procedure but is rather a preparatory action and is therefore as such not appealable (T 1182/04 and T 1226/07).

(xi) When not acceding to a request to hold oral proceedings in Munich instead of The Hague, the examining division does not take a decision but only expresses the way the EPO is managed. Consequently, that issue is not subject to appeal, nor can the board refer a question on the venue of oral proceedings to the Enlarged Board of Appeal (T 1142/12).

(xii) A communication of information by which the appellant was informed that, as the decision to grant had been rectified under Art. 109 EPC, the examination procedure was resumed, and it was not possible to file an opposition during this part of the procedure. The appeal was rejected as inadmissible under Art. 107 EPC (J 22/12).

The board in T 1676/08 found that to comply with Art. 21(4)(b) EPC 1973, it was sufficient for the board to indicate in EPO Form 3303.15 that the complexity of the case was the reason for enlarging the board from three to five members; it was not obliged to give detailed reasoning why it considered the case at issue complex. A change in a board's composition with regard either to the number of its members under Art. 21(4)(b) EPC 1973 or to the replacement of a member under Art. 4 of the Business Distribution Scheme of the Technical Boards of Appeal was not a decision within the meaning of Art. 106 EPC and Art. 113(1) EPC 1973.

T 26/88 (OJ 1991, 30), which held that a document stating that the patent was revoked under Art. 102(4) and (5) EPC 1973 did not constitute a decision, was overruled by G 1/90 (OJ 1991, 275).

26 references found.

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EPC Articles

EPC Implementing Rules

Case Law Book: III Amendments

Case Law Book: IV Divisional Applications

Case Law of the Enlarged Board

General Case Law