May 12, 2020
The EPO’s new Rules of Procedure of the Boards of Appeal (RPBA) came into force on 1 January 2020. One notable change was to Article 11 RPBA, which concerns when a Board of Appeal should remit a case to the department of first instance for further prosecution, and when it should decide on the entire case itself.
Article 111 (1) EPC states that a Board may either exercise any power within the competence of the department which was responsible for the decision appealed, or remit the case to that department for further prosecution. The EPC thus gives the Boards of Appeal discretion as to whether or not a case should be remitted to the department of first instance. In exercising this discretion, the practice of the Boards of Appeal has generally been to remit cases where issues that were important to patentability were not the subject of the first instance decision. For example, if a Board overturned a first instance decision to revoke a patent for lack of sufficient disclosure, it would normally remit the case to the Opposition Division for further examination of the remaining grounds of opposition.
Article 11 of the new RPBA states 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, and that as a rule, fundamental deficiencies which are apparent in the first instance proceedings constitute special reasons. This wording leaves open the question of what constitutes ‘special reasons’ (other than ‘fundamental deficiencies’), and, in particular, whether a case could still be remitted for the sole reason that the first instance decision did not address important issues still to be decided.
Some recent decisions from the Boards in early 2020 indicate that remittal is likely to remain common under the new rules. These decisions also provide some direction as to what may constitute ‘special reasons’.
This relates to a case in which the Opposition Division found that the invention was not sufficiently disclosed, but no decision was taken regarding the other grounds of opposition (lack of novelty and inventive step). The Board overturned the Opposition Division’s decision regarding sufficiency of disclosure, and, in accordance with the requests of both parties, decided to remit the case to the Opposition Division for further examination of novelty and inventive step. The Board commented that it is well recognised that any party may be given the opportunity of two readings of the important elements of a case; that the essential function of an appeal is to consider whether the decision issued by the first-instance department is correct; and that a case is normally remitted if essential questions regarding patentability have not yet been examined. The Board then commented that the circumstances of this case, including the request by both parties for remittal, are ‘special reasons’ for remittal in the sense of Article 11 of the new Rules of Procedure.
Decision T 1966/16
In this decision, the Board overturned the Examining Division’s decision and found that the claimed invention involved an inventive step, but identified various other deficiencies in the claims which had been identified by the Examining Division, but which had not been the subject of the first instance decision. The Board decided to remit the case for further examination, commenting that ‘special reasons’ for remittal were apparent because the Examining Division has not taken an appealable decision on essential outstanding issues with respect to sufficiency of disclosure, clarity and added matter.
Other recent decisions
Similar conclusions have been reached in various other decisions, including T 1964/17, T 2172/15, T 0297/17, T 1508/17, T 0986/16, T 1265/15, T 2024/15, T 0731/17, T 1077/17, T 2496/17, T 1159/15, T 2676/16, T 0658/17, T 0275/15, T 1900/17, T 1621/17 and T 0702/17.
In conclusion, from these recent decisions, it appears that requisite ‘special reasons’ for remittal under the new rules of procedure include many scenarios that occur reasonably often, such as when there is no first instance decision on essential outstanding issues. It therefore appears that remittal to the department of first instance is likely to remain a common outcome in EPO appeal proceedings.