T 0275/15 - Let's continue the ping-pong

Key points

• The OD considered the claims to be not novel over E12 (a US patent). The Board considers the claims novel. The Board has to decide whether to remit the case for a discussion of inventive step.
• “Article 11 RPBA 2020 provides that the Board shall not remit a case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so. However, this provision has to be read in conjunction with Article 12(2) RPBA 2020, which provides that it is the primary object of the appeal proceedings to review the decision under appeal in a judicial manner [...]. This principle would not be respected if the Board were to conduct a complete examination of the application. Consequently, in the present case, Article 11 RPBA 2020 does not entail that the Board should carry out a full examination of the application for compliance with the requirements of Article 56 EPC for which no decision of the first instance exists yet.”
• As a comment, this reasoning of the Board is perfectly generic in my view and can be copy/pasted any time the Board would possibly have to deal with a new ground or objection in opposition (new in the sense of: not discussed in the impugned decision).
• I note that the procedure is unusual in that the opponent as respondent did not file any comments in appeal. It's not so clear to me if the opponent can submit inventive step attacks still after remittal, or if he has waived such attacks by not maintaining the attacks in its Statement or response in appeal. So, perhaps, the Board is actually friendly to the opponent by remitting the case.
• In the present case, the application was filed in 2001 and the patent was granted in 2011. Opposition filed in 2012. Appeal filed in 2015. Five years later, the Board remits the case. Quite possibly, after remittal and a further appeal, the opposition will end well after the expiry of the patent term. 

EPO T 0275/15 - link

V. The respondent did not file a reply to the statement of grounds of appeal.

VI. By a communication under Rule 100(2) EPC dated 28 November 2019 the parties were informed that the Board intends to set aside the decision and to remit the case to the department of first instance.

VII. The respondent did not file any observations in reply to this communication within the set time period of two months.

VIII. On 3 April 2020 the registrar of the Board contacted the representative of the respondent who confirmed that no reply to the above communication had been delivered to a recognised postal service provider in due time before expiry of the period. Hence, there are no requests of the respondent on file.

[...]
3. Novelty in view of E12

3.1 The present analysis is based on the wording of claim 1 according to the text annexed to the communication under Rule 71(3) EPC. The published version contained several mistakes.

[...]

3.9 Consequently, the subject-matter of claim 1 is novel over E12 [E12: US 5 035 704].


4. Remittal to the department of first instance

4.1 As said before, the subject-matter of present claim 1 is novel. However, the claims of the main request have not been examined with regard to inventive step by the Opposition Division.

4.2 Under Article 111(1) EPC, the Board may in the present case either proceed further with the examination of the application, in particular with respect to Article 56 EPC, or remit the case to the examining division for further prosecution. Since the present appeal was pending on 1 January 2020, the revised version of the RPBA applies (OJ EPO 2019, A63), subject to the transitional provisions set out in Article 25 of said RPBA. In particular Article 11 RPBA 2020 is applicable.

4.3 Article 11 RPBA 2020 provides that the Board shall not remit a case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so. However, this provision has to be read in conjunction with Article 12(2) RPBA 2020, which provides that it is the primary object of the appeal proceedings to review the decision under appeal in a judicial manner (see also T 1966/16 from 20 January 2020, point 2.2 of the reasons and T 0547/14 from 29 January 2020, point 7.1 and 7.2 of the reasons).

4.4 This principle would not be respected if the Board were to conduct a complete examination of the application. Consequently, in the present case, Article 11 RPBA 2020 does not entail that the Board should carry out a full examination of the application for compliance with the requirements of Article 56 EPC for which no decision of the first instance exists yet.

4.5 Consequently, the Board considers it appropriate to exercise its discretion under Article 111(1) EPC to remit the case to the department of first instance for further prosecution.

5. Request for republication of the patent specification

The request for republication of the patent specification must be considered once the definitive version of claim 1 is established.

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.