Key points
- The Board finds a substantial procedural violation in that the refusal decision does not discuss two auxiliary requests filed by the applicant during the oral proceedings before the ED.
- The Board decides to remit the case.
- “ The appellant requested oral proceedings before the board in the event that the board considers not to grant a patent based on the present main request.”
- Clearly, the Board does not order the grant of the patent, rather a remittal for further substantive examination. Are oral proceedings before the Board necessary under Art.116?
- “The board recalls that a request for oral proceedings under Article 116(1) EPC must be granted if it is envisaged that a final decision might be issued which is adverse to the party making that request (see e.g. T 47/94, Reasons 6). However, it is established jurisprudence that a remittal of an appeal case without any consideration of the substantive issues is not to be considered as being adverse to a party, so that no hearing before the board is deemed necessary or appropriate solely to discuss whether or not such case should be remitted (see e.g. T 42/90, Reasons 5; T 166/91, Reasons 7; T 315/92, Reasons 5; T 47/94, Reasons 6; T 1727/12, Reasons 3).”
EPO T 1051/20 -
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
https://www.epo.org/law-practice/case-law-appeals/recent/t201051eu1.html
1.6 This lack of reasoning further prevents the board from reviewing the examining division's exercise of discretion, as would be required under Article 12(6) RPBA 2020 for the purposes of admittance of auxiliary requests II and III into the appeal proceedings. Rather than analysing a complete chain of reasoning, the board would in fact be forced to speculate about the examining division's motivation for a conclusion announced only orally during the oral proceedings, and on the sole basis of the succinct statement appearing in point 8 of the respective minutes, to which the written decision does not even refer.
2. Reimbursement of the appeal fee (Rule 103(1)(a) EPC)
2.1 It is established case law that failure to provide reasons pursuant to Rule 111(2) EPC constitutes a substantial procedural violation justifying reimbursement of the appeal fee (see T 493/88, Reasons 7).
2.2 Hence, reimbursement of the appeal fee is ordered on the board's own motion (see e.g. J 7/82 (OJ EPO 1982, 391), headnote III).
3. Remittal to the examining division for further prosecution (Article 111(1) EPC)
3.1 Pursuant to Article 11 RPBA 2020, fundamental deficiencies (such as substantial procedural violations) which are apparent in the first-instance proceedings constitute "special reasons" for a remittal of an appeal case to the first-instance department for further prosecution.
3.2 Accordingly, the board has decided that the case is to be remitted to the examining division for further prosecution on the basis of the four claim requests on file at the end of the oral proceedings held before the examining division, which are the same claim requests as filed with the statement of grounds of appeal.
4. Auxiliary request for oral proceedings
4.1 The appellant requested oral proceedings before the board in the event that the board considers not to grant a patent based on the present main request.
4.2 The board recalls that a request for oral proceedings under Article 116(1) EPC must be granted if it is envisaged that a final decision might be issued which is adverse to the party making that request (see e.g. T 47/94, Reasons 6). However, it is established jurisprudence that a remittal of an appeal case without any consideration of the substantive issues is not to be considered as being adverse to a party, so that no hearing before the board is deemed necessary or appropriate solely to discuss whether or not such case should be remitted (see e.g. T 42/90, Reasons 5; T 166/91, Reasons 7; T 315/92, Reasons 5; T 47/94, Reasons 6; T 1727/12, Reasons 3).
4.3 In view of the above, the board's decision is handed down in written proceedings (cf. Article 12(8) RPBA 2020).
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the first instance for further prosecution on the basis of the four claim requests filed with the statement of grounds of appeal.
3. The appeal fee is to be reimbursed.
1.6 This lack of reasoning further prevents the board from reviewing the examining division's exercise of discretion, as would be required under Article 12(6) RPBA 2020 for the purposes of admittance of auxiliary requests II and III into the appeal proceedings. Rather than analysing a complete chain of reasoning, the board would in fact be forced to speculate about the examining division's motivation for a conclusion announced only orally during the oral proceedings, and on the sole basis of the succinct statement appearing in point 8 of the respective minutes, to which the written decision does not even refer.
2. Reimbursement of the appeal fee (Rule 103(1)(a) EPC)
2.1 It is established case law that failure to provide reasons pursuant to Rule 111(2) EPC constitutes a substantial procedural violation justifying reimbursement of the appeal fee (see T 493/88, Reasons 7).
2.2 Hence, reimbursement of the appeal fee is ordered on the board's own motion (see e.g. J 7/82 (OJ EPO 1982, 391), headnote III).
3. Remittal to the examining division for further prosecution (Article 111(1) EPC)
3.1 Pursuant to Article 11 RPBA 2020, fundamental deficiencies (such as substantial procedural violations) which are apparent in the first-instance proceedings constitute "special reasons" for a remittal of an appeal case to the first-instance department for further prosecution.
3.2 Accordingly, the board has decided that the case is to be remitted to the examining division for further prosecution on the basis of the four claim requests on file at the end of the oral proceedings held before the examining division, which are the same claim requests as filed with the statement of grounds of appeal.
4. Auxiliary request for oral proceedings
4.1 The appellant requested oral proceedings before the board in the event that the board considers not to grant a patent based on the present main request.
4.2 The board recalls that a request for oral proceedings under Article 116(1) EPC must be granted if it is envisaged that a final decision might be issued which is adverse to the party making that request (see e.g. T 47/94, Reasons 6). However, it is established jurisprudence that a remittal of an appeal case without any consideration of the substantive issues is not to be considered as being adverse to a party, so that no hearing before the board is deemed necessary or appropriate solely to discuss whether or not such case should be remitted (see e.g. T 42/90, Reasons 5; T 166/91, Reasons 7; T 315/92, Reasons 5; T 47/94, Reasons 6; T 1727/12, Reasons 3).
4.3 In view of the above, the board's decision is handed down in written proceedings (cf. Article 12(8) RPBA 2020).
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the first instance for further prosecution on the basis of the four claim requests filed with the statement of grounds of appeal.
3. The appeal fee is to be reimbursed.
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