T 1966/16 - Remittal under RPBA 2020

Key points

• The  Board remits the case to the Examining Division, after finding that: “it follows from the above that the sole ground for the refusal set out in the decision under appeal, namely a lack of inventive step over D6, is not justified.”
• “The Board identified several potential deficiencies in present claims 1-7 with respect to Articles 83, 84 and 123(2) EPC, as explained in the communication of the Board pursuant to Article 15(1) RPBA”
• “Article 11 RPBA 2020 provides that the Board shall not remit a case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so.
• The Board holds that such special reasons are apparent in the present case because the examining division has not taken an appealable decision on essential outstanding issues with respect to Articles 83, 84 and 123(2) EPC. As recalled in Article 12(2) RPBA 2020, the primary object of the appeal proceedings is to review the decision under appeal in a judicial manner. This principle would not be respected if the Board were to conduct a complete examination of the application. Consequently, in the present case, Article 11 RPBA 2020 does not entail that the board should carry out a full examination of the application for compliance with the requirements of Articles 83, 84 and 123(2) EPC for which no decision of the first instance exists yet.”
• As a comment, the Board could cancel oral proceedings by remitting the case. On the other hand, the present application is an Euro-PCT application with filing date in 2009. If the formal issues identified by the Board lead to a refusal by the Examining Division and further appeal, it may still take another 5 years until the decision on the application is final. 

EPO T 1966/16 -  link



Accordingly, the finding of lack of inventive step over D6 must be set aside.

2. Remittal to the examining division

2.1 It follows from the above that the sole ground for the refusal set out in the decision under appeal, namely a lack of inventive step over D6, is not justified.

However the Board identified several potential deficiencies in present claims 1-7 with respect to Articles 83, 84 and 123(2) EPC, as explained in the communication of the Board pursuant to Article 15(1) RPBA (see paragraph 2. of the communication dated 29 October 2019). Although the examining division raised related objections of lack of clarity and sufficiency of disclosure in the communication dated 9 May 2014, the decision under appeal does not address these issues. It is unclear whether the examining division regarded the objections as overcome.

2.2 Under Article 111(1) EPC, the Board may in the present case either proceed further with the examination of the application, in particular with respect to Articles 83, 84 and 123(2) EPC, or remit the case to the examining division for further prosecution.

Since the present appeal was pending on 1 January 2020, the revised version of the RPBA applies (OJ EPO 2019, A63), subject to the transitional provisions set out in Article 25 of said RPBA. In particular Article 11 RPBA 2020 is applicable. Article 11 RPBA 2020 provides that the Board shall not remit a case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so.

The Board holds that such special reasons are apparent in the present case because the examining division has not taken an appealable decision on essential outstanding issues with respect to Articles 83, 84 and 123(2) EPC. As recalled in Article 12(2) RPBA 2020, the primary object of the appeal proceedings is to review the decision under appeal in a judicial manner. This principle would not be respected if the Board were to conduct a complete examination of the application. Consequently, in the present case, Article 11 RPBA 2020 does not entail that the board should carry out a full examination of the application for compliance with the requirements of Articles 83, 84 and 123(2) EPC for which no decision of the first instance exists yet.

Under these circumstances, the Board considers it appropriate to allow the appellant's request for remittal of the case to the examining division.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the examining division for further prosecution.