T 2138/15 - The effect of a remittal

 Key points

• The board dismisses the appeal of the patentee against the decision of the OD to revoke the patent.
• The board finds the claims to be obvious.
• The interesting aspect is that the filing date was in 1998 as PCT application. EP entry in 1999. Grant in 2003. Opposition filed in 2004 (!). So this opposition took in total 17 years. The first OD decision was taken in 2008. An appeal was filed and the first appeal decision T 0621/08 was issued in 2012, remitting the claims after finding them to meet Art. 123(2) and to be novel. 
• So the remittal added more than 8 years (three years until the second decision of the OD in 2015, five years for the second appeal), extending the opposition procedure well after the expiry of the 20-year patent term.
• The Board in the first appeal decision: “The decision of the opposition division was based on the finding of lack of novelty over document D9. As the issue of inventive step has not yet been argued by the parties, the board considers it appropriate to remit the case to the department of first instance for further prosecution (Article 111(2) EPC). This was also the desire expressed by both parties.”
• The Board in the present second decision finds the claim at issue to be obvious in view of D9 and common general knowledge.

T 2138/15

https://www.epo.org/law-practice/case-law-appeals/recent/t152138eu1.html

(decision text omitted)