T 0987/16 - Remittal; 49 requests

Key points

• In this opposition appeal, the Board concludes that claim 1 as granted is not inventive. The Board then turns to the auxiliary requests.
• "The considerably high number of auxiliary requests (49 in total) filed by the Patentee (most of these were already filed during opposition proceedings) is not compatible with general legal principles of the appeal proceedings." 
• After this observation, I expected to Board to refuse to admit the requests (probably on the ground of lack of convergence). However, the Board remits the case.
• " In the present case the high number of auxiliary requests is tantamount to seeking protection for a subject-matter which is to be defined by tentatively selecting a multitude of combinations of different features to be introduced into claim 1, without a convergence criterion or a common concept being apparently recognizable. Discussing each of these requests and deciding on it would therefore amount to a renewed examination of the application [sic! ] by the first instance department. However, this is not the intended purpose of the appeal proceedings. Consequently, the Board decided to remit the case to the department of first instance".
• In my view, the "consequently" is not persuasive. Usually, in case of a patentee filing auxiliary requests in a way that goes against the purpose of appeal proceedings, the requests are not admitted.
• A question for the readers: should the OD assess admissibility after the remittal by applying Article 12(4) RPBA as the Board would (could) have done, or are all requests now admissible as being filed before the Rule 116 EPC date that will be set for the further oral proceedings to be held before the OD after remittal?

EPO T 0987/16 - link

5. The considerably high number of auxiliary requests (49 in total) filed by the Patentee (most of these were already filed during opposition proceedings) is not compatible with general legal principles of the appeal proceedings. Appeal proceedings are by their very nature a judicial procedure, which is less investigative than opposition proceedings before the department of first instance (see decision of the Enlarged Board of Appeal G 9/91). In the present case the high number of auxiliary requests is tantamount to seeking protection for a subject-matter which is to be defined by tentatively selecting a multitude of combinations of different features to be introduced into claim 1, without a convergence criterion or a common concept being apparently recognizable. Discussing each of these requests and deciding on it would therefore amount to a renewed examination of the application by the first instance department. However, this is not the intended purpose of the appeal proceedings. Consequently, the Board decided to remit the case to the department of first instance (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 department of first instance for further prosecution.