T 2194/14 - Decision only on remittal

Key points

• In this opposition appeal, the OD had rejected the opposition. The opponent appeals. At the end of the oral proceedings, the patentee withdraws the main request (claims as granted) and auxiliary requests 1 and 2; and requests remittal for auxiliary requests 3 to 8. These AR3-8 are the same as were pending before the OD (which did not arrive at them, finding the claims as granted allowable)
• The Board remits the case. 
• " In the present case, although the appellant requested the Board to take a final decision rather than to remit the case to the opposition division, the case is remitted for further prosecution. The appealed decision established that none of the grounds of opposition raised by the  appellant held against the patent as granted. Requests corresponding to present auxiliary requests 3 to 8 were available at that time, but have not been the subject of the appealed decision. Due to the withdrawal of the main request by the respondent, the appealed decision is to be set aside. Contrary to what the appellant alleged, no lack of patentability of auxiliary requests 3 to 8 is prima facie apparent to the Board."
• This is a smart move of the patentee. Clearly, the Board had announced a negative conclusion on the claims as granted, but there is no decision on the claims as granted and no ratio decidendi either. Back before the OD, the opponent will have to win again on those issues and the patentee can in effect deny (or challenge) any adverse findings of the Board on the claims as granted.

EPO  T 2194/14  - link


Summary of Facts and Submissions
At the end of oral proceedings ... The respondent [patentee], while withdrawing all other requests, requested:V. Oral proceedings were held on 4 December 2018. For the further course of the oral proceedings, in particular the issues discussed with the parties, reference is made to the minutes.

that, when setting aside the decision under appeal, the case be remitted to the opposition division for further prosecution on the basis of auxiliary requests 3 to 8.

Reasons for the Decision

1. Auxiliary requests 3 to 8 - Admittance into the proceedings

1.1 As noted by the appellant and as acknowledged by the respondent, the independent claims of auxiliary requests 3 to 8 contain features extracted from different parts of the description of the application as filed.

The subject-matter of these claims corresponds to that of the claims of auxiliary requests 3 to 8 submitted during proceedings before the opposition division with letter of 12 August 2014.

1.2 The appellant requested not to take these auxiliary requests into consideration, as they were directed towards embodiments which were not decided upon in the appealed decision, thereby raising fresh and divergent issues.

1.3 This procedural request of the appellant cannot be allowed by the Board.

It is settled case law (Case Law of the Boards of Appeal, 8th edition 2016, IV.E.4.1.2, see also Article 12(1) and (2) RPBA) that a respondent-patent proprietor can file requests at a timely stage of the appeal proceedings, in particular together with its reply to the statement of grounds of appeal.

The admission into the proceedings of such requests depends on the Board's discretion under Article 12(4) RPBA, and is not excluded by general principles of law.

In the present case, auxiliary requests 3 to 8 cannot be excluded under Article 12(4) RPBA because none of respective auxiliary requests 3 to 8 submitted during proceedings before the opposition division with letter of 12 September 2014 was withdrawn during opposition proceedings or not admitted by the opposition division. Because the opposition of the appellant was rejected by the opposition division, which found that none of the grounds for opposition submitted by the appellant-opponent prejudiced the maintenance of the patent as granted, there was obviously no need to address any of the corresponding auxiliary requests on their merits and/or their admissibility.

2. Remittal to the opposition division

2.1 The appellant requested not to remit the case to the opposition division, arguing that this would unduly lengthen the proceedings, because lack of patentability of the claims of auxiliary requests 3 to 8 was prima facie apparent.

2.2 The Board disagrees.

Under Article 111(1) EPC the Board may either decide on the appeal in exercising any power within the competence of the opposition division that issued the decision under appeal, or remit the case to the opposition division for further prosecution. The appropriateness of remittal to the opposition division is a matter for discretionary decision by the Board, which assesses each case on its own.

In the present case, although the appellant requested the Board to take a final decision rather than to remit the case to the opposition division, the case is remitted for further prosecution.

The appealed decision established that none of the grounds of opposition raised by the appellant held against the patent as granted.

Requests corresponding to present auxiliary requests 3 to 8 were available at that time, but have not been the subject of the appealed decision.

Due to the withdrawal of the main request by the respondent, the appealed decision is to be set aside.

Contrary to what the appellant alleged, no lack of patentability of auxiliary requests 3 to 8 is prima facie apparent to the Board.

It is, however, not for the Board to conduct the necessary detailed examination of said auxiliary requests for the first time, as appeal proceedings primarily serve the parties' right to a review in a judicial manner of the contested decision (G 9/91 and G 10/91, OJ 1993, 408, 420).

In order not to deprive the respondent, who expressly requested it, of the opportunity to defend auxiliary requests 3 to 8 before two instances, the Board considers it appropriate, taking the above into account and weighing it against the arguments against remittal expressed by the appellant, to make use of its discretionary power under Article 111(1) EPC and to remit the case 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 on the basis of auxiliary requests 3 to 8 filed with letter dated 3 June 2015.