T 2092/18 - A remittal is an attractive thing

 Key points

• There is still not much case law about Art. 11 RPBA 2020 in cases where one of the parties protests against a remittal. The idea behind Article 11 RPBA 2020 is that the Boards remit a case only if there are "special reasons" for doing so. Though more precisely, the Board's own idea (fist public draft) was that remittal would be the default but after a public consultation the BOAC decided 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".
• In this case, the OD had revoked the patent on the ground of Article 123(2) and Rule 80. The Board reverses, such that novelty and inventive step need to be considered. 
• The Board decides to remit the case, despite the protest of the patentee.
• "The Board holds that the special reasons under Article 11 RPBA 2020 are immediately apparent in the present case as the contested decision does not deal with the issues of novelty and inventive step (Article 54 and 56 EPC) for any of the requests that were considered. "
• "The appellant requested to not remit the case to the Opposition Division to discuss novelty and inventive step since it would be a financial burden". The Board is not persuaded by this argument.

EPO T 2092/18 - link

4. Remittal to the Opposition Division

The impugned decision is only based on Article 123(2) EPC for the subject-matter of claim 1 and Rule 80 EPC for claims 1 and 3 of all the requests then pending before the Opposition Division.

Under Article 111(1) EPC the Board of Appeal may either decide on the appeal or remit the case to the department which was responsible for the decision appealed.

Under Article 11 RPBA 2020 the Board may remit the case to the department whose decision was appealed if there are special reasons for doing so.

The appellant requested to not remit the case to the Opposition Division to discuss novelty and inventive step since it would be a financial burden and unfair to the patent proprietor who was a private person and, additionally, since it would be highly unlikely that such a remittal would render a negative decision on novelty or inventive step by the Opposition Division bearing in mind the state of the art at hand. If the Board decided to remit the case to the Opposition Division, the appellant further requested that the further prosecution of the case be done with another composition of the Opposition Division than that which took the contested decision.

The Board holds that the special reasons under Article 11 RPBA 2020 are immediately apparent in the present case as the contested decision does not deal with the issues of novelty and inventive step (Article 54 and 56 EPC) for any of the requests that were considered. The primary object of the appeal procedure is to review the decision of the first instance department in a judicial manner (see Article 12(2) RPBA 2020).

The Board further shares the view of the respondent that if particular concern were to be taken to the financial situation of a party, that would go against the principle of procedural equality of the parties to the proceedings. Such a reason cannot justify depriving the respondent (opponent) of a two instance procedure with respect to issues never considered by the Opposition Division. In this context, the argument that a negative decision on novelty and inventive step would be issued, as put forward by the appellant, is rather speculative since the Opposition Division neither presented its preliminary view on novelty and inventive step nor decided on it.