Interlocutory Revision and the Devolutive Effect: Board 3.5.01 on Secret Notes
Board 3.5.01 identifies a substantial procedural violation where an examining division placed a substantive analysis of an appeal in the non-public electronic file. The decision also heavily criticises the arbitrary replacement of examiners.
The requirement under Article 109(2) EPC to remit an appeal "without comment as to its merit" is an absolute procedural boundary that precludes an examining division from placing substantive analyses of the appeal into the non-public electronic file. In T 0759/23, Technical Board of Appeal 3.5.01 confronted a highly unusual procedural sequence during the interlocutory revision phase, ultimately finding a substantial procedural violation that necessitated remittal.
The non-public electronic dossier
The applicant filed an appeal against the refusal of their European patent application. During a routine check of the internal Form 2701, the Board noticed two anomalies. First, an extensive internal note had been added to the non-public part of the electronic file six weeks after the grounds of appeal were filed. Second, the entire examining division had been replaced just four days after the filing of the grounds of appeal, with one of the newly appointed examiners being a director (reasons 17).
Violating the devolutive effect
The internal note acted as a votum discussing the appeal. It analysed the allowability of the refused request, drew negative conclusions on the persuasiveness of the appellant's arguments, and even addressed previous claim versions and documents not used in the original refusal (reasons 5).
The Board held that this internal note containing comments and conclusions on the substance of the case violates the requirement to remit the case "without comment" under Article 109(2) EPC. By providing comments on the merits after issuing the decision, the examining division went beyond its assigned role and undermined the devolutive effect of the appeal (reasons 6). This procedural flaw constituted a substantial procedural violation justifying remittal under Article 111(1) EPC.
Arbitrary administrative steps
The Board then turned to the wholesale replacement of the examining division. The unsigned internal note appeared to have been drafted by a new member to assist the others in deciding whether to rectify the decision. The Board observed that this procedure did not serve the purpose of an interlocutory revision, but rather represented a complete re-examination of the file (reasons 9).
The Board firmly rejected the notion that broad administrative powers justify such changes without cause, stating that just because the President of the Office or any delegee has the power to do something does not mean that they should do it (reasons 15). The arbitrary replacement of the examining division is not supported by a reasonable interpretation of the Guidelines for Examination. Procedural steps must be subject to reasonable safeguards to avoid the perception that they are exercised for reasons unrelated to the purpose of the procedure.
Practical implications
The decision establishes a strict boundary for the interlocutory revision process: the examining division cannot leave a hidden substantive roadmap for the Board. If a decision is not rectified, the file must be passed on silently.
Furthermore, the Board issued a strong call for procedural transparency, advising that the part of Form 2701 indicating whether the decision is rectified, along with the printed names of the examiners, should be made public (reasons 18). For practitioners facing an unexpected refusal to grant interlocutory revision, this decision provides grounds to scrutinise any unexplained changes in the composition of the examining division. The Board explicitly noted that any deviation from the narrow reasons for replacement mentioned in the Guidelines should be kept to a minimum and explained publicly. The case was remitted for further prosecution, with the Board noting it would be desirable for it to be processed by the original examining division.