T 2090/14 - The structure of Art.111

Key points

• In this examination appeal, "lack of novelty [over] D2 was the sole reason given in the decision under appeal for the refusal of the application. In the board's judgement (see above), the subject-matter of the claims of the main request is not anticipated by the disclosure of document D2." 
• The Board then concludes: "Pursuant to Article 111(1) EPC, following the examination as to the allowability of the appeal, the board will decide on the appeal, and in that respect it may either exercise any power within the competence of the department which was responsible for the decision or remit the case for further prosecution." The Board remits the case because the ED had not dealt with inventive step.
• I like this decision, because it clarifies that in principle there are two phases under Article 111(1), a first phase of review whether the impugned decision is correct. If yes, the appeal is dismissed, if no, the second phase is applicable. In the second phase the Board can examine whether the patent application meets the requirements of the EPC for the first time in appeal and it can also remit the case (the same for opposition appeals, of course). 
• Art. 111(1) EPC reads: "Following the examination as to the allowability of the appeal, the Board of Appeal shall decide on the appeal. The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution." 
• In my view, this also means that any auxiliary request considered in the first stage, must be admissible under Art. 12(4) RPBA, whereas that provision should be less relevant in the second stage.

EPO T 2090/14 - link

Allowability of the appeal

11. Lack of novelty vis-à-vis the disclosure of document D2 was the sole reason given in the decision under appeal for the refusal of the application. In the board's judgement (see above), the subject-matter of the claims of the main request is not anticipated by the disclosure of document D2.

12. The appeal is thus found to be allowable.

Remittal (Article 111(1) EPC)

13. Pursuant to Article 111(1) EPC, following the examination as to the allowability of the appeal, the board will decide on the appeal, and in that respect it may either exercise any power within the competence of the department which was responsible for the decision or remit the case for further prosecution.

14. Since the examining division has not dealt with inventive step and as the appellant has requested remittal, the board decides to remit the case to the examining division for further prosecution, thereby giving the appellant the opportunity to have its case heard by two instances.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the examining division for further prosecution on the basis of the set of claims of the main request filed during the oral proceedings on 22 June 2018.