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7.1
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General remarks
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If the department whose decision is contested considers the appeal to be admissible and well founded, it must rectify its decision. This does not apply where the appellant is opposed by another party to the proceedings.
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Art. 109(1)
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The obligation or possibility of rectification may thus arise in connection with a decision by the Receiving Section, the Legal Division or an Examining Division. In opposition proceedings, it only arises in the special case that all the notices of opposition have been withdrawn and the proprietor of the patent files an appeal.
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After receipt of the statement of grounds, only three months are available for rectification of the decision by the department of the first instance. That department must therefore consider the appeal with the highest priority and start the examination on admissibility immediately, and if the appeal is considered admissible in the form in which it has been filed, the competent department will start its examination on allowability immediately.
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Art. 109(2)
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The department concerned will rectify its decision if convinced in the light of the grounds of appeal that the appeal is admissible and well founded. This could arise, for example, because:
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(i)
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the department failed to take due account of some of the material available to it at the time the decision was made;
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(ii)
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the department did not receive material filed at the EPO in due time before the issue of the decision, owing to an office error; or
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(iii)
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the decision of the department concerned does not appear to be incorrect, but the applicant presents new information or evidence or files amendments to the application, which overcome the objections of the decision under appeal (see T 139/87, OJ 3/1990, 68).
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Hence, in case of newly submitted amendments which meet the substantive objections dealt with in the decision under appeal, the decision must be rectified. This could be the case, for example, if the amendments were ones which were actually suggested by the Examining Division in the course of the proceedings, but which the applicant was previously unwilling to make. If the amendments meet the objections contained in the decision under appeal, but raise new ones not yet discussed, interlocutory revision must also be allowed as the applicant has the right to two instances (see T 219/93, not published in OJ). The new objections may make it necessary to issue a further communication and/or to arrange for oral proceedings before a further decision is taken (see T 691/91 and T 919/95, neither published in OJ).
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For the advantages of a decision covering more than one objection, see X, 5, last paragraph.
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CHAPTER XI APPEALS
7.2 Remittal to the Board of Appeal
