T 0839/14 - Remittal in 10th year opposition procedure

Key points

• Notice of opposition was filed in 2008, so the procedure is taking 10 years by now. The Board remits the case back to the OD.
• The Board finds the Main Request to be sufficiently disclosed and to be novel over E13 (I understand unlike the OD, which had allowed the 1st AR).
• " The opposition division has neither considered novelty with respect to the other documents brought forward against it, nor did it examine and decide on the ground of inventive step in the light of further citations. At appeal stage neither the Appellant-Opponent nor the Appellant-Proprietor have submitted any argument in relation to these issues. Therefore, as was confirmed at the oral proceedings before the Board, neither the parties nor the Board were in a position to conduct a meaningful discussion of these remaining issues. Indeed at the oral proceedings both parties for this very reason requested remittal."

EPO T 0839/14 - link

5.5 Since E13 does not directly and unambiguously disclose a high resolution linear actuator moving the piston, the Board can but conclude that the subject-matter of claim 1 [of the Main Request, PJL] is novel with respect to this prior art according to Art. 54(2) EPC.

6. Remittal

6.1 The Board has considered the exercise of the first instance discretionary power not to admit the fresh ground under Art 100c), and has further considered opposition grounds based on Art l00(b) and Art 100a) in relation with Art 54(1) EPC in respect of E13 and has reached the conclusion its subject-matter contained novel features with respect to this disclosure.

6.2 The opposition division has neither considered novelty with respect to the other documents brought forward against it, nor did it examine and decide on the ground of inventive step in the light of further citations. At appeal stage neither the Appellant-Opponent nor the Appellant-Proprietor have submitted any argument in relation to these issues. Therefore, as was confirmed at the oral proceedings before the Board, neither the parties nor the Board were in a position to conduct a meaningful discussion of these remaining issues. Indeed at the oral proceedings both parties for this very reason requested remittal.

6.3 In view of the above, the Board decided to exercise its discretionary power of the Board under Art 111(1) EPC to remit the case to the department of first instance.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further decision.