T 1003/15 - Re-examination or review?

Key points

• In this opposition appeal, the opponent filed new documents D4 and D5 with the Notice of appeal. In response, patentee restricted the claims. 
• However, the first question is admissibility of the appeal. The opponent did not attack the finding of the OD that the claims at issue were novel and inventive over D1-D3. According to the Board, the appeal is admissible because the opponent had maintained in appeal that ", in view of the absence of this essential feature from claim 1 of the allowed claims, the problem addressed by the patent was not solved across the whole breadth of the claims", therefore the claims lacked inventive step. This line of argument is not further discussed in the appeal, in fact the Board only decides to admit D4 and D5 and the case is remitted to the OD.
• In my view, it is not very satisfying that admissibility of the appeal is based on an argument that is not further discussed. If the Boards are strictly a review instance, then D4 and D5 should  not be admitted. If the Boards are more of a re-examination panel, then D4 and D5 should themselves make the appeal admissible. The reason for the requirement that the Statement of grounds contains at least one reason for setting aside the impugned decision, as required by Rule 99(2) EPC, is that otherwise the appeal makes no sense. In this decision, the OD's decision is set aside based on D4 and D5, therefore the filing of those documents with the Statement of grounds should be sufficient for admissibility. 

EPO T 1003/15 -  link

Reasons for the Decision

1. Admissibility of the appeal

The appellant [opponent] did not make any comment in its statement of grounds of appeal as regards the decision of the opposition division over the relevance of documents D1-D3 which were discussed in the decision of the opposition as regards novelty (D1, D3) and inventive step (D2).

The appellant however maintained its objections as to the breadth of the claims and the absence of an essential feature in claim 1 of the claims maintained by the opposition division, namely the absence of a surfactant. According to the appellant, in view of the absence of this essential feature from claim 1 of the allowed claims, the problem addressed by the patent was not solved across the whole breadth of the claims, which failed to meet the requirements of Article 56 EPC.

An appeal by an opponent is admissible if the grounds of appeal contain at least one reason for setting aside the impugned decision, as required by Rule 99(2) EPC. This is the case with the present appeal with objections already presented during the opposition proceedings as regards the resolution of the problem over the whole scope of the claims. The statement of grounds of appeal of the opponent appears thus to constitute an answer to the decision of the opposition division and the appeal appears to be admissible.

2. Admission of documents D4 and D5 into the proceedings

Documents D4 and D5 are new documents, that were filed in the appeal proceedings by the appellant with its statement of grounds of appeal. Said new evidences D4 and D5 were therefore not present and discussed during the opposition proceedings.

According to Article 12(4) RPBA, a board of appeal has the power to hold inadmissible facts, evidence or requests which inter alia could have been presented in the opposition proceedings, which is obviously the case of D4 and D5.

However, in the present case, and in response to the statement of grounds of appeal and of the submissions of the new documents D4 and D5, the respondent submitted also new sets of claims, as main and auxiliary requests. The subject-matter of said new requests is substantially modified and more restricted that the subject-matter of auxiliary request 1 which was considered to meet the requirements of the EPC by the opposition division. The submission of these new requests constitutes an explicit response to the new documents, and a implicit recognition of their prima facie relevance for the claims which were found to meet the requirements of the EPC during the opposition proceedings.

In parallel to the submissions of the new main and auxiliary requests, the respondent did also not object the admission of the new documents D4 and D5 into the appeal proceedings.

It appears also immediately obvious that said documents D4 and D5 are indeed prima facie relevant, not only for the claims which were found to meet the requirements of the EPC during the opposition proceedings, but also at least for the claims of the main request submitted in the appeal proceedings, as regards novelty and/or inventive step.

The Board exerts thus its discretionary power and decides to admit documents D4 and D5 into the proceedings (Article 12(4) RPBA).

3. Remittal to the opposition division

The discussion on novelty and inventive step of the new main request over the newly submitted documents D4 and D5 constitutes a new case which was not discussed during the opposition proceedings.

Although Article 111(1) EPC does not guarantee a party an absolute right to have all the issues in the case considered by two instances, it is well recognised that any party should, whenever possible, be given the opportunity to said consideration by two instances of the important elements of the case. The essential function of an appeal proceedings is to consider whether the decision under appeal is correct. Hence, a case is normally remitted if further criteria of patentability have not yet been examined and decided in the proceedings leading to the decision under appeal, or as in the present new documents and new requests have been filed.

Hence, the Board considers it appropriate to remit the case to the examining division for further prosecution on the basis of the main request.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

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