T 0389/12 - Remittal of opposition in 19th year

EPO T 389/12
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Key points

• In this opposition-appeal case, the Board decides to remit the case to the Opposition Division for further prosecution. The appellant/patentee requested to avoid a remittal "in consideration of the fact that the proceedings, in particular the examination, had already been very long."
• The Board comments that "the appellant itself contributed to the long duration of the examination proceedings by requesting several time-extensions to reply to the communications of the examining division." 

Reasons for the Decision

Main Request (set of claims submitted on 30 April 2012 as auxiliary request 1)

2. Novelty

[...]

2.7 In view of the above, the Board considers that the hot-melt extrusion process used for preparing the controlled-release formulations of claim 1 render these formulations different from those disclosed in D1, which have been prepared by a process of compression molding.

The subject-matter of the main request therefore complies with the requirement of novelty.

Remittal

3. The essential function of an appeal is to consider whether the decision issued by the first-instance department is correct. Hence, a case is normally remitted to the first-instance department if essential questions regarding the patentability of the claimed subject-matter have not been examined and decided by that department.

3.1 In particular, remittal is considered by the Boards in cases where a first-instance department issues a decision against a party solely upon a particular issue which is decisive for the case, and leaves other essential issues outstanding. If, following appeal proceedings, the appeal on the particular issue is allowed, the case is normally remitted to the first-instance department for consideration of the undecided issues (Article 111(1) EPC).

3.2 The observations made above fully apply to the present case. The patent was revoked for lack of novelty in view of document D1, without any assessment of the requirement of inventive step. Moreover, document D1, which is the sole prior art document discussed in the appealed decision, does not relate to pharmaceutical compositions prepared by hot-melt extrusion. Since the main issue addressed by the patent is the provision of controlled-release formulations prepared by hot-melt extrusion, document D1 does not appear to be a highly relevant document for the assessment of inventive step.

Hence, the assessment of this requirement would be based on prior art documents which were not considered at all in the appealed decision.

3.3 While the respondent requested in its submissions of 12 October 2015 to remit the case to the opposition division if one of the requests were considered to comply with the requirement of novelty, the appellant requested during oral proceedings to avoid a remittal in consideration of the fact that the proceedings, in particular the examination, had already been very long.

3.4 The Board considers that the appellant's arguments do not affect the validity of the considerations put forward in point 3.2 above. Moreover, the appellant itself contributed to the long duration of the examination proceedings by requesting several time-extensions to reply to the communications of the examining division.

3.5 Under these circumstances, the Board, in the exercise of its discretionary power pursuant to Article 111(1) EPC, finds it appropriate to remit the case on the basis of the main request to the opposition division for further prosecution.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the Opposition Division for further prosecution.