T 1000/14 - Remittal in examination appeal?

Key points

• In this examination appeal, the applicant requests remittal on the ground that "the board had raised new objections in the appeal proceedings which had not been discussed in the decision under appeal". Furthermore, according to G10/93, the Board can also examine new issues.
• The Board discusses this request first. The Board notes that is a discretionary power to remit the case. The Board then " that both the claims under examination and the issues to be discussed have remained the same. The appellant could not have been taken by surprise by the aspects of the case pointed out by the board" 
• " Since the substantive basis of the discussion has not changed, the board finds it appropriate not to remit the case to the department of first instance." 
• I wonder if this means that if the Board had raised new issues, remittal would have been necessary. Article 111(1) EPC appears to assume that the Board first carries out "the examination as to the allowability of the appeal" and is quite clear that only following such examination, the Board "shall decide on the appeal". Article 111(1) EPC second sentence then states that "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 second sentence gives more information about the "shall decide" of the first sentence. This means that the Board must first decide whether the appeal is allowable, only if the appeal is allowable and the impugned decision is hence set aside, can a remittal be ordered. This rule is actually quite important because it safeguards the appellants right to a decision of the Board on the merits of his appeal: the Board can not simply remit the case to avoid having to take a decision on the merits of the appeal. 
• Note 05.04.2019: the above ["Board must first decide whether the appeal is allowable"] of course only applies if the Board does not refuse the application. If the Board refuses the application, it can do so on any ground. E.g. if the Board finds the claims unclear, the Board can leave open the question if a refusal by the Examining Division based on lack of novelty was correct or not.

EPO T 1000/14 - link

X. The appellant's arguments may be summarised as follows:

Remittal (Article 111 EPC)

The board had raised new objections in the appeal proceedings which had not been discussed in the decision under appeal, in particular the objection concerning lack of clarity. The board's further remarks implied that it regarded document D2 rather than D1 as the closest prior art. It was not fair for the appellant to have only one chance to respond to these new issues.

Reasons for the Decision

1. Remittal (Article 111 (1) and (2) EPC)

1.1 Under Article 111(1) EPC, a board of appeal has the discretionary power either to exercise any power within the competence of the department of first instance or to remit the case to that department for further prosecution.

1.2 Thus the appropriateness of remittal is a matter for decision by the boards, which assess each case on its merits.

1.3 In its Decision G 10/93 (OJ EPO 4/1995, 172), the Enlarged Board of Appeal held that in an appeal from a decision of an examining division in which a European patent application was refused, the board of appeal has the power to examine whether the application or the invention to which it relates meets the requirements of the EPC, including requirements which the examining division did not take into consideration or which it regarded as having been met. If there is reason to believe that such a requirement has not been met, the board shall include this ground in the proceedings.

1.4 In the present instance, the board observes that both the claims under examination and the issues to be discussed have remained the same. The appellant could not have been taken by surprise by the aspects of the case pointed out by the board, for the following reasons:

1.4.1 The issue of clarity and the disclosure content of document D2 (which is an earlier patent application by the appellant) are addressed in the board's preliminary written communication, issued more than two months before the scheduled oral proceedings. The appellant chose not to reply in writing (see points VI and VII above).

1.4.2 On a general note (and as previously pointed out in the board's preliminary opinion), the meaning of the terms used in a claim must be established for proper claim assessment; thus the appellant could expect that it would be required to explain the definition and meaning of the technical features of claim 1, in particular since those features were essential for delimiting the claimed subject-matter from the prior art, e.g. D2.

1.4.3 The board furthermore observes that a crucial objection in the examining division's reasoning on inventive step was the lack of technical information regarding parameters A and B, leading to the examining division's conclusion that those parameters were not defined in sufficient detail to be clearly distinctive and establish an inventive step of the claimed subject-matter over the prior art (see the decision under appeal, reasons 3.6). Thus it was to be expected that the definition of the parameters A and B and the meaning of the term A+B(t) would be discussed in the appeal proceedings. The board merely finds it more appropriate to deal with this issue under Article 84 rather than Article 56 EPC.

1.4.4 The disclosure of document D2 is discussed both in the decision under appeal (reasons 3.4), where it is acknowledged that this earlier application discloses the general principle of the method of present claim 1, and in the statement setting out the grounds of appeal (various passages relating to D2 or the European patent issued from D2).

1.5 Since the substantive basis of the discussion has not changed, the board finds it appropriate not to remit the case to the department of first instance.