T 1444/13 - Remittal after second appeal

Key points

• In this case, the Notice of opposition was filed on 17.08.2005. The present appeal is the second appeal, after T0109/08. In its decision of September 2016, the Board remits again. No decision on novelty and inventive step has been made so far. 
• The Board criticizes the OD. In the first appeal decision, the Board had decided to admit insuffiency of disclosure as late ground of opposition. Instead of deciding thereon, the OD had rejected the claims under Article 100(c) EPC.
• " Thus, having regard to the clear indications provided in T 109/08 and also considering that a decision revoking a patent based solely on Article 100(c) EPC may in many cases be set aside in appeal proceedings because a new set of claims is filed, the opposition division should have examined the requirement of sufficiency of disclosure."
• The Board generally notes that " A first-instance department should conduct an examination as complete as possible, in order to reduce the likelihood of remittal in any subsequent appeal." This is of course quite different from current EPO practice.

EPO T 1444/13 -  link

Summary of Facts and Submissions

I. The present decision relates to the second appeal concerning European patent No. 1 005 318, which was filed as an international application published as WO 99/65453.

Reasons for the Decision

Remittal

4. The primary function of an appeal is to consider whether the decision issued by the first-instance department was correct. Hence, a case is normally remitted if essential questions regarding the patentability of the claimed subject-matter have not yet been examined and decided by the department of first instance.

In particular, remittal is considered by the boards in cases where a first-instance department takes a decision against a party having regard to only some issues decisive for the case, and leaves other essential issues outstanding. If, following appeal proceedings, the appeal on the particular issues addressed is allowed, the case is normally remitted to the first-instance department for consideration of the undecided issues (Article 111(1) EPC).

4.1 The observations above apply in full to the present case.

In the first appeal proceedings concerning the present case, the competent Board came to the conclusion that the arguments put forward by the respondent during the first opposition proceedings raised reasonable doubts as to whether the requirement of sufficiency of disclosure was met. Accordingly, it considered that the late-filed ground for opposition under Article 100(b) EPC should have been admitted into the proceedings (point 4.9 of the reasons). The case was therefore remitted to the opposition division for further prosecution with the explicit indication to carry out a substantive examination of the requirement of sufficiency of disclosure (point 6.3 of the reasons).

Instead of deciding on sufficiency of disclosure the opposition division introduced a new opposition ground under Article 100(c) EPC and revoked the patent for non-compliance with Article 123(2) EPC. It furthermore considered that the auxiliary requests did not comply with Article 123(3) EPC. Thus, neither in the first nor in the second decision of the opposition division has the ground of sufficiency of disclosure (Article 100(b) EPC) been dealt with.

4.2 A first-instance department should conduct an examination as complete as possible, in order to reduce the likelihood of remittal in any subsequent appeal. In the present case, it appears that the requirement of sufficiency of disclosure could have been examined despite the problems regarding the allowability of the amendments. Furthermore, the Board competent for the first appeal remitted the case with the explicit indication that a substantive examination of the ground under Article 100(b) EPC should be carried out. It furthermore emphasised that there was little point in assessing the other opposition grounds until the issue of sufficiency had been resolved (point 6.1 of the reasons). Thus, having regard to the clear indications provided in T 109/08 and also considering that a decision revoking a patent based solely on Article 100(c) EPC may in many cases be set aside in appeal proceedings because a new set of claims is filed, the opposition division should have examined the requirement of sufficiency of disclosure.

4.3 While the appellant requested already in the statement setting out the grounds of appeal the appealed decision to be set aside and the case remitted to the opposition division, the respondent opposed remittal for the first time in its letter of 25 August 2016, essentially arguing that the proceedings had already been very long. However, both in this letter and in its previous written submissions (i.e. in the reply to the statement setting out the grounds of appeal) the respondent did not develop any arguments on substantive issues. It generically indicated that it was maintaining the objections presented in the earlier written submissions and in the oral proceedings.

4.4 Article 12(2) RPBA states that a party should specify expressly all the facts, arguments and evidence on which it wants to rely. The wording "specify expressly" suggests that a mere reference to previous submissions may well not be sufficient. In the Board's view this applies even more when said reference also covers facts, arguments and evidence presented in the course of earlier proceedings.

In this context, the Board would point out that the scope of the present appeal is to review the second decision of the opposition division. Thus, if a party wishes the Board to consider the possibility of also examining other issues not addressed in the appealed decision but raised by the parties during previous proceedings, it is a prerequisite that the party concerned present a complete case within the meaning of Article 12(2) RPBA in respect of those issues too.

4.5 In the present case, in the absence of any written submissions in relation to the substantive issues, these would have had to be dealt with, as far as the present appeal proceedings are concerned, for the first time during the oral proceedings. In the Board's view, this was not possible given the complexity and number of issues to be dealt with, which included sufficiency of disclosure, novelty and inventive step. In the Board's opinion, it would also be unfair to the appellant to open a discussion in which the respondent could potentially cherry-pick the evidence and arguments it wants to use from those submitted throughout the entire proceedings concerning this case.

4.6 Thus, in the light of the circumstances of the present case the Board decides to remit the case to the opposition division for the examination of all the outstanding issues.

Order

For these reasons it is decided that:

1. Decision under appeal is set aside.

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