T 0899/17 - Skipping AR's

Key points

• In this opposition appeal, the OD maintained the patent in amended form based on Auxiliary Request 10. 
• "In the impugned decision the [OD] gave reasons for the failure of the main request, auxiliary request 3, auxiliary request [10-old] and the success of new auxiliary request 10. " However, no reasons were given at all in connection with AR 1, 2, and 4-9 although these requests were maintained by the patentee. 
• " According to the minutes of the oral proceedings before the [OD] the [MR] was discussed and its subject-matter was not found patentable. On proposal of the patent proprietor the discussion went on with [AR-3] (leaving out [AR's] 1 and 2), and then - again on the patent proprietor's proposal - with [AR 10-old[ by skipping [AR's] 4 to 9, both requests discussed also not considered acceptable. [AR 10-old] was then replaced by [AR 10-new] which the [OD] finally found to meet the requirements of the EPC. According to the minutes, at the end of the oral proceedings the patent proprietor explicitly declared that it would not withdraw any of the auxiliary requests filed during the written procedure".
• The Board " However this [proposal of patentee during the oral proceedings to jump to AR-3 and to AR-10] does not discharge the opposition division to deal with all pending auxiliary requests, in particular it should have set out the reasons why the higher-ranking auxiliary requests 1, 2 and 4 to 9 failed to meet the requirements of the EPC. It goes without saying that a decision against any of these requests may not be taken until the patent proprietor has been informed, with respect to each of these requests, of the reasons for not allowing them (Art. 113(1) EPC)." This is a substantial procedural violation according to the Board. The case is remitted and the appea fees (of all appellants) are reimbursed.

EPO Headnote
The reasons for the failure of auxiliary requests which were skipped in the discussion during the oral proceedings before the opposition division in favour of more promising lower-ranking auxiliary requests and which were explicitly not withdrawn by the patent-proprietor have to be set out in the written decision.

EPO T 0899/17 - link

Reasons for the Decision

1. Procedural deficiency

1.1 According to Rule 111(2) EPC, decisions which are open to appeal shall be reasoned. Only if a decision is adequately reasoned a party adversely affected by a decision of the department of first instance or a board of appeal is able to examine whether the decision was justified or not. Pursuant to the established jurisprudence of the Boards of Appeal a decision of any of the departments of first instance of the EPO must contain, in logical sequence, those arguments which justify the order. In accordance with established case law (see e.g. T 0897/03, T 0278/00 and T 2282/17) a violation of Rule 111(2) EPC is considered a substantial procedural violation.

1.2 In the impugned decision the opposition division gave reasons for the failure of the main request, auxiliary request 3, auxiliary request 10 (old, though the latter was already replaced by auxiliary request 10 new) and the success of new auxiliary request 10. In the end of the written decision it said: "The proprietor maintained the remaining requests in the order they were filed". Those were auxiliary requests 1, 2 and 4 to 9, however any reasoning with regard to the failure of those (higher ranking) requests is missing in the decision.

1.3 After a proper discussion of the issues with the parties, the opposition division should have given reasons for all relevant requests on file pending before it, e.g. the main request (claims as granted) and auxiliary requests 1 to 10 (clearly no reasoning was required regarding lower-ranking auxiliary request 11 also on file). According to the minutes of the oral proceedings before the opposition division the main request was discussed and its subject-matter was not found patentable. On proposal of the patent proprietor the discussion went on with auxiliary request 3 (leaving out auxiliary requests 1 and 2), and then - again on the patent proprietor's proposal - with auxiliary request 10 (old) by skipping auxiliary requests 4 to 9, both requests discussed also not considered acceptable. Auxiliary request 10 was then replaced by a new auxiliary request 10 which the opposition division finally found to meet the requirements of the EPC. According to the minutes, at the end of the oral proceedings the patent proprietor explicitly declared that it would not withdraw any of the auxiliary requests filed during the written procedure (see p.9 of the minutes). This concerned auxiliary requests 1, 2, 4 to 9 (and 11).

1.4 Since auxiliary requests 1, 2 and 4 to 9 were still pending the opposition division should have given reasons why it found them not to fulfil the requirements of the EPC, notwithstanding the patent proprietor's proposal to proceed with the more distant auxiliary requests 3 and 10. However this does not discharge the opposition division to deal with all pending auxiliary requests, in particular it should have set out the reasons why the higher-ranking auxiliary requests 1, 2 and 4 to 9 failed to meet the requirements of the EPC. It goes without saying that a decision against any of these requests may not be taken until the patent proprietor has been informed, with respect to each of these requests, of the reasons for not allowing them (Art. 113(1) EPC). The opposition division should have followed the Guidelines Part E.X.2.9 according to which the reasons must set out the grounds for the non-allowability or non-admissibility of each request which ranks higher than the allowable request.This was not done here at least not in a written form.

2. Remittal to the department of first instance

2.1 Under Article 11 RPBA, a board may decide that a case is remitted to the department of first instance after it has found fundamental deficiencies in the first instance proceedings. Such decision is subject to the discretion of the board concerned. A board remits a case to the department of first instance unless special reasons present themselves for doing otherwise.