T 1057/24 - (II) Claim amendments after remittal

Key points

• "The board agrees with the parties that the case should be remitted to the opposition division for further prosecution.
• It does not, however, see any legal basis for [the opponent's] additional request that the further prosecution be limited to the claim request that was considered [by the Board] to comply with Article 123(2) EPC, [i.e. current] auxiliary request 5c."
• The Board gives an overview of the legal framework for the procedure after a remittal, which seems useful but not entirely complete. I cite it below, omitting the extensive case law references. See also the post on T 781/24.
• "The EPC contains no restrictions on the scope of examination following the remittal of a case by the board beyond those set out in Article 111(2) EPC [*]. This provision stipulates that, if the board remits a case [for] further prosecution to the department whose decision was appealed, that department is bound by the ratio decidendi of the board, in so far as the facts are the same. Findings of fact on which the board's decision rests are, thus, not open to reconsideration []. In opposition proceedings following the remittal for further prosecution, however, the factual basis underlying a decision on appeal may subsequently change [**], not only by the identification of further prior art, but also through amendments to the patent claims [***]. Such amendments are not precluded by the binding effect of Article 111(2) EPC, provided that they do not contravene the ratio decidendi of the remitting decision [].
• * - I don't think this is entirely correct: we also have the principle of res judicata and the continued application of the prohibition of reformatio in peius (the latter is not applicable in the case at hand since the proprietor had filed the appeal).
• ** - The meaning of the phrase "the factual basis underlying a decision on appeal" in this context is unclear to me. Was is clear, however, is that parties may, seek to introduce new assertions of facts after the remittal, and such factual allegations may or may not be admitted into the procedure. 
• *** - I don't think claim amendments are facts, see Art. 123(1) vs. Art. 114(2).
• "That is not to say that a patent proprietor should be free to redefine the claimed invention after remittal and have the opposition division examine any subject-matter that was not already settled by the appeal []). Further prosecution of a case after remittal should, as a rule, build upon the situation that existed at the end of the appeal proceedings that led to the remittal []). As was the case prior to the appeal proceedings resulting in the remittal, the opposition division has discretion to admit amended requests (Article 123(1) EPC, Rule 81(3) EPC) and may do so in application of established criteria, such as prima facie allowability, complexity of the amendments, procedural economy, the stage of the proceedings, and whether the amendments constitute a legitimate response to new developments in the proceedings []. Confining the further prosecution of a case after remittal to a particular claim request would, in effect, fetter that discretion thereby contravening the EPC."
• "In view of the above, it was decided to remit the case to the opposition division for further prosecution."

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t241057eu1

7.1 The board agrees with the parties that the case should be remitted to the opposition division for further prosecution.

7.2 It does not, however, see any legal basis for respondent II's additional request that the further prosecution be limited to the claim request that was considered to comply with Article 123(2) EPC, which in the present case would be auxiliary request 5c.

7.3 The EPC contains no restrictions on the scope of examination following the remittal of a case by the board beyond those set out in Article 111(2) EPC (T 1092/23, Reasons 1.8). This provision stipulates that, if the board remits a case of further prosecution to the department whose decision was appealed, that department is bound by the ratio decidendi of the board, in so far as the facts are the same. Findings of fact on which the board's decision rests are, thus, not open to reconsideration (T 843/91 of 5 August 1993, Reasons 3.4.2). In opposition proceedings following the remittal for further prosecution, however, the factual basis underlying a decision on appeal may subsequently change, not only by the identification of further prior art, but also through amendments to the patent claims. Such amendments are not precluded by the binding effect of Article 111(2) EPC, provided that they do not contravene the ratio decidendi of the remitting decision (T 27/94, Reasons 2 and 2.3; T 609/94, Reasons 2.1 and 2.2; T 1630/08, Reasons 2.3.1).

7.4 That is not to say that a patent proprietor should be free to redefine the claimed invention after remittal and have the opposition division examine any subject-matter that was not already settled by the appeal (T 383/11, Reasons 1.4; T 1238/22, Reasons 1.3.3). Further prosecution of a case after remittal should, as a rule, build upon the situation that existed at the end of the appeal proceedings that led to the remittal (T 383/11, Reasons 1.4; T 2194/22, Reasons 2.3.3; T 781/24, Reasons 2.8.4). As was the case prior to the appeal proceedings resulting in the remittal, the opposition division has discretion to admit amended requests (Article 123(1) EPC, Rule 81(3) EPC) and may do so in application of established criteria, such as prima facie allowability, complexity of the amendments, procedural economy, the stage of the proceedings, and whether the amendments constitute a legitimate response to new developments in the proceedings (T 1092/23, Reasons 1.10 and 1.12). Confining the further prosecution of a case after remittal to a particular claim request would, in effect, fetter that discretion thereby contravening the EPC.

7.5 In view of the above, it was decided to remit the case to the opposition division for further prosecution.