T 2342/14 - Remittal and preliminary opinion

Key points

• The OD had revoked the patent for added subject-matter only. Four years later, the Board finds the (amended) claims to comply with Art. 123(2) EPC and remits the case. The opponent had objected that this would not be procedurally compliant.
• " However, should the board decide on key issues for the first time at the appeal stage it would have the consequence that a party loses a review instance." 
• " The board has taken note of the statement in the summons to oral proceedings before the OD that the "opposition division is thus of the preliminary opinion that the subject-matter of claim 1 is new and inventive". However, in the absence of any reasoning, it can only be speculated as to why the opposition division reached this conclusion, which is in any case of a provisional nature." 
• I think that this is correct, but it does not seem very positive that the opposition procedure arrives at novelty and inventive step after 5 years of proceedings. None of the instances was particularly slow in this case: the OD took its decision within one year, the Boar took about 3.5 years from the Statement of grounds. But with a new OD decision after remittal and a further appeal, the opposition may very well take more than 10 years in total. 

EPO T 2342/14 -  link

Summary of Facts and Submissions

I. The appeal lies from the decision of the opposition division to revoke European Patent No. 1 829 625. In its decision the opposition division held that the subject-matter of granted claims 1 and 2 comprised added subject-matter (Articles 100(c) and 123(2) EPC).

Reasons for the Decision

6. Remittal to the opposition division (Article 111(1) EPC)

6.1 During the oral proceedings the respondent [opponent] inferred that a continuation of the case before the opposition division would not be procedurally efficient. However, should the board decide on key issues for the first time at the appeal stage it would have the consequence that a party loses a review instance.

6.2 In the present case, the only grounds for opposition considered in the decision under appeal and which the board therefore considered in the present decision were those of Article 100(b) and (c) EPC. The board has taken note of the statement in the summons to oral proceedings before the opposition division that the claimed method of the patent as granted did not appear to be disclosed in the prior art cited by the respondent and that the "opposition division is thus of the preliminary opinion that the subject-matter of claim 1 is new and inventive". However, in the absence of any reasoning, it can only be speculated as to why the opposition division reached this conclusion, which is in any case of a provisional nature.

6.3 Given these circumstances, the board considers that remittal of the case to the opposition division for further prosecution is the most appropriate course of action (Article 111(1) EPC).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the opposition division for further prosecution on the basis of the claim of auxiliary request 2 filed at the oral proceedings before the board.