T 0733/14 - Cancelling claims, remittal

Key points

• In this opposition appeal, the patentee gives up the product claims and files an AR with only the independent claim for the process. The request is admitted and the case is remitted.
• " The opposition division has not yet ruled on the process claims, since the discussion during the oral proceedings before the opposition division focused only on the product claims. It is not the duty of the Boards of Appeal to consider and decide upon questions raised for the first time during the appeal proceedings. "
• The notice of opposition was filed in 2012, the patent in 2002. 

EPO T 0733/14 - link

Reasons for the Decision

1. Auxiliary request 4 - Admission into the proceedings

This request corresponds to auxiliary request 5 filed with letter dated 14 December 2017, which has been objected by respondent 02 under Article 13(3) RPBA. Present auxiliary request is objected under the same Article 13(3) RPBA.

Claim 1 of auxiliary request 4 is identical to independent claim 23 of the main request filed with the statement of grounds of appeal, and corresponds thus to an independent claim present in a request filed at the earliest stage of the appeal proceedings. It therefore cannot be considered as late-filed, as argued by respondent 02. Moreover, its subject-matter cannot constitute a surprise, since it is based on independent claim 25 as granted with the subject-matter of its dependent claim 31 as granted incorporated therein.

Hence, the Board does not see any reason not to accept this request into the proceedings under Article 13(3) RPBA.

2. Auxiliary request 4 - Remittal to the opposition division

The opposition division has not yet ruled on the process claims, since the discussion during the oral proceedings before the opposition division focused only on the product claims. It is not the duty of the Boards of Appeal to consider and decide upon questions raised for the first time during the appeal proceedings. Instead, the main purpose of appeal proceedings is to give the losing party the opportunity to challenge the decision of the opposition division (cf. G 9/91, loc. cit., point 18 of the Reasons). Taking into account that the the decision of the opposition division does not deal with the process claims, the Board considers it appropriate to exercise its power conferred on it by Article 111(1) EPC to remit the case to the opposition division for further prosecution on the basis of the claims according to the auxiliary request 4. This remittal has not been objected by any party to the appeal proceedings.

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.