T 1077/17 - Remittal after sufficiency reversal

Key points

• In this opposition appeal, the OD found the patent to be insufficiently disclosed. The Board reverses and finds the disclosure to be sufficient. Then the question arises of whether to remit the case. 
• “In the present case, substantive issues (such as novelty and inventive step) raised in opposition proceedings are not dealt with in the decision under appeal nor have the parties submitted their case on these issues in the appeal proceedings”
• “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 patent for compliance with the requirements of Articles 54 and 56 EPC for which no decision of the first instance exists yet. Therefore, the Board considers it appropriate to remit the case to the opposition division”
• The alternative strict approach would probably have been for the Board to conclude that the opponent should have maintained all novelty and inventive step objections in its initial appeal submissions. 

EPO T 1077/17 -  link


3.8 The Board thus concludes that the disclosure of the invention in the patent in suit as granted is sufficient, in particular as regards the defined minimum recovery of the monomeric form, contrary to the findings in the decision under appeal.

4. Amendments

For the Board, the claimed subject-matter is based on at least original claims 1, 2, 9, 12, 14, 18 and 23. Each of these claims referring back to any one of the preceding claims, their combination is at least implicitly and unambiguously disclosed thereby. It follows that there is no reason to deviate from the decision under appeal on this ground.

5. Remittal

Under Article 11 RPBA 2020 the Board may remit the case to the department whose decision was appealed if there are special reasons for doing so.

In the present case, substantive issues (such as novelty and inventive step) raised in opposition proceedings are not dealt with in the decision under appeal nor have the parties submitted their case on these issues in the appeal proceedings.

Under these circumstances, the Board holds that such special reasons are apparent in the present case.

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 patent for compliance with the requirements of Articles 54 and 56 EPC for which no decision of the first instance exists yet. Therefore, the Board considers it appropriate to remit the case to the opposition division (see also T 1966/16, point 2.2 of the reasons).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the first instance for further prosecution.