T 1716/12 - Remittal for adapting the description

Key points

• In this decision of 21.04.2021, the Board deals with the appeal against the refusal decision of the Examining Division of 27.02.2012 (!).
• The invention is about computer technology, in particular about the BIOS module, and is held to be inventive.
• The Board notes that the description needs to be adapted to the amended claims.
• The Board then has to decide whether or not to remit the case. Article 11 RPBA 2020 specifies 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 Explanatory Notes state: “Art. 11 only applies to cases that are remitted ‘for further prosecution’. In particular, it does not apply to cases that are remitted with an order by the Board to grant a patent or to maintain a patent in amended form, with or without the description to be adapted.” The present decision does not discuss that Note, but seems to recall that Article 111(1)  provides that “the Board of Appeal may ... remit the case to that department for further prosecution.” Hence, each remittal is “for further prosecution” based on the text of Article 111(1). 
• The Board: “According to Article 11 RPBA 2020, the board shall not remit a case to the department of first instance, unless special reasons present themselves for doing so. In this board's view, the remittal "with a description to be adapted", as has become common practice of the boards of appeal, is, effectively, a remittal for further prosecution within the meaning of Article 111(1) EPC and under the limitations according to Article 111(2) EPC. As the appellant has indicated, its absence from oral proceedings, dealing with the adaptation of the description in the appeal proceedings would require a further written dialogue with the appellant before an eventual remittal with the order to grant a patent. The board takes the view that it is more efficient to deal with the adaptation of the description as part of the grant procedure under Rules 71(3) and (6) EPC, and considers this to be special reasons for remittal under Article 11 RPBA 2020.”
• As a comment, the Board does not simply refer to the remark in the Explanatory Notes but identifies a special reason for remittal.
• As a comment, the Examining Division could also issue a normal Communication under Article 94(3) EPC and Rule 71(1) EPC inviting the application to file an amended description. 
• The order of the decision is that the appealed decision is set aside and “The case is remitted to the first instance for further prosecution.” 

T 1716/12 

https://www.epo.org/law-practice/case-law-appeals/recent/t121716eu1.html

5.8 The board therefore holds that the subject-matter of independent claim 1 and, for similar reasons, of independent claim 5 is inventive (Article 56 EPC 1973).

6. Other issues

The board has no occasion to raise any objections to the claims on its own volition.

However, the board notes that the description appears to require adaptation to the present claims. In the present case, the board takes the view that for instance the sentence spanning pages 3 and 4 of the description, stating that "In at least some embodiments, the BIOS 110 of the computer 100 comprises a boot block 112 and a signature domain 116 used as a CRTM 118A" needs adaptation under Article 84 EPC 1973, given that according to claim 1 this is the case for all embodiments.

7. Remittal

According to Article 11 RPBA 2020, the board shall not remit a case to the department of first instance, unless special reasons present themselves for doing so. In this board's view, the remittal "with a description to be adapted", as has become common practice of the boards of appeal, is, effectively, a remittal for further prosecution within the meaning of Article 111(1) EPC and under the limitations according to Article 111(2) EPC. As the appellant has indicated, its absence from oral proceedings, dealing with the adaptation of the description in the appeal proceedings would require a further written dialogue with the appellant before an eventual remittal with the order to grant a patent. The board takes the view that it is more efficient to deal with the adaptation of the description as part of the grant procedure under Rules 71(3) and (6) EPC, and considers this to be special reasons for remittal under Article 11 RPBA 2020.

Order

For these reasons it is decided that:

1. The appealed decision is set aside.

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