T 0173/19 - The Board remits for inventive step

Key points

• This case concerns an opposition appeal. "Since the patent proprietor has convincingly demonstrated the incorrectness of the appealed decision as far as the alleged lack of novelty of the subject-matter of claim 1 of the main request with respect to D7 is concerned, and the opponents have not convincingly demonstrated that any of D1, D3 and D3' deprives the subject-matter of claim 1 of the main request of novelty, the appealed decision cannot be upheld and should be set aside."
• "The Board is aware that, according to Article 11 RPBA 2020 a remittal for further prosecution should only be undertaken exceptionally, when special reasons apply."
• "Noting that the opposition division has not addressed the issue of inventive step of the subject-matter claimed in the main request the Board cannot come to a decision regarding this patentability requirement by reviewing the decision under appeal in a judicial manner as set out in Article 12(2) RPBA 2020."
• "Moreover, although the patent proprietor has indicated its preference for dealing with the issue of inventive step at the oral proceedings before the Board, both opponents have expressed themselves in favour of a remittal referring to the complexity of the case and to the need for the parties to re-assess the case in view of the Board's conclusions on novelty."
• "Against this background, after considering all the relevant circumstances of the case at hand, the Board, noting that Article 11 RPBA 2020 cannot be seen as limiting the discretionary power of the Board provided by Article 111(1) EPC, considers it appropriate to remit the case to the opposition division for further prosecution."
• As a comment, the Board may of course mean that no provision in the RPBA can be seen as limiting any of the Board's discretionary powers under the EPC (which then should then logically apply equally to Article 12 or 13) or that the provision's wording "The Board shall not remit a case" should be understood as not limiting. 

EPO 

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/t190173eu1.html

5. Remittal of the case to the opposition division - Articles 111(1) EPC and 11 RPBA 2020

5.1 The Board is aware that, according to Article 11 RPBA 2020 a remittal for further prosecution should only be undertaken exceptionally, when special reasons apply.

5.2 The Board notes that the decision under appeal on the main request, after having discussed the objections of sufficiency of disclosure (Article 100 b) EPC) and unallowable extension (Article 100 (c) EPC), only dealt with one of the grounds of opposition according to Article 100(a) EPC, namely lack of novelty, and only discussed the content of the disclosure of document D7.

Noting that the opposition division has not addressed the issue of inventive step of the subject-matter claimed in the main request the Board cannot come to a decision regarding this patentability requirement by reviewing the decision under appeal in a judicial manner as set out in Article 12(2) RPBA 2020.

Moreover, although the patent proprietor has indicated its preference for dealing with the issue of inventive step at the oral proceedings before the Board, both opponents have expressed themselves in favour of a remittal referring to the complexity of the case and to the need for the parties to re-assess the case in view of the Board's conclusions on novelty.

Against this background, after considering all the relevant circumstances of the case at hand, the Board, noting that Article 11 RPBA 2020 cannot be seen as limiting the discretionary power of the Board provided by Article 111(1) EPC, considers it appropriate to remit the case to the opposition division for further prosecution.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the opposition division for further prosecution.