- This is one of the first cases where the Board decides on whether or not to remit the case in opposition under Art. 11 RPBA 2020 where one of the parties requests a remittal and the other party objects.
- The OD found the claims of the main request to be allowable; the OD therefore did not consider AR-1 where granted claims 1 and 6 are combined. In appeal, the patentee makes AR-1 the new main request. The opponent request that the case be remitted.
- “In the present case, notwithstanding the fact that the decision under appeal is limited to the main request, auxiliary request 1 does not alter the legal and factual framework, because it results from a combination with a granted dependent claim (namely claim 6). Furthermore, the [opponent] was in a position to examine auxiliary request 1. [...] Accordingly, the Board does not consider a remittal to be justified.”
- I note that in other cases, the Boards
have foundappear to have found a combination of granted claims to be a change of the ‘legal and factual framework’, see e.g. T 2242/17.
EPO T 0418/17 - link
2. Remittal to the opposition division
The respondent, by letter dated 25 May 2020, made auxiliary request 1 its highest ranking request. According to the appellant, the decision under appeal is limited to the main request and does not relate to the auxiliary requests. The appellant therefore requests that the case be remitted to the opposition division for further discussion on auxiliary requests 1-9.
Under Article 11 RPBA 2020, the Board may remit the case to the opposition division if there are special reasons for doing so. Although it is the primary object of the appeal proceedings to review the decision under appeal in a judicial manner (see Article 12(2) RPBA 2020), there is no absolute right to have every issue decided at two instances.
In the present case, notwithstanding the fact that the decision under appeal is limited to the main request, auxiliary request 1 does not alter the legal and factual framework, because it results from a combination with a granted dependent claim (namely claim 6). Furthermore, the respondent (see the letter dated 20 July 2018, pages 17-20) was in a position to examine auxiliary request 1. Given that the Board finds auxiliary request 1 to be allowable (see below), the question of a remittal in relation with auxiliary requests 2-9 is moot.
Accordingly, the Board does not consider a remittal to be justified.
A reader wrote: " "The difference between T 418/17 and T 2242/17 is that in the former the BA admitted a late filed document and hence it was justified to admit a request taking this into account.
ReplyDeleteAs it was a combination of granted claims [in T 418/17], the legal and factual situation had not changed for the opponent. Remittal was thus moot as the Board found the request allowable.
In T 2248/17, the proprietor waited during oral proceedings until all its preceding requests were considered not allowable to file a request combining claims 1-12 as granted. As the proprietor was aware of the negative position of the board towards the other requests, it was clearly too late to come up with such a combination of claims as granted during oral procceeding. As it was not admitted, the question of remittal was also moot."