Tuesday, 20 October 2020

T 294/16 - The Board shall not remit, unless


It is not always so easy to turn around and go back.


Article 11 of the Revised Rules of Procedure of the Boards of Appeal (RPBA 2020) reads as follows:

Article 11

Remittal

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. As a rule, fundamental deficiencies which are apparent in the proceedings before that department constitute such special reasons.

In this decision the Board found that such special reasons were present. The application was rejected for lack of novelty, but the Board did not agree with that finding. As inventive step or clarity was not examined, the case is remitted. 

 Reasons for the Decision

1. Main request - Article 54 EPC

1.1 In its decision the examining division concluded that the subject-matter claimed was not novel over the disclosure of document D3.

1.2 D3 discloses in example 1 and Table 1 the preparation of veterinary tablets comprising 3 wt% praziquantel as active ingredient in combination with febantel and pyrantel pamoate, blended with 20 wt% of artificial beef flavor and 10 wt% of yeast as taste masking agents (see also par. [0026], [0029] of D3), as well as with microcrystalline cellulose, lactose and silicon dioxide. All the components are mixed in powder form, and finally two lipids, namely 1 wt% of magnesium stearate and 1 wt% of stearic acid, are added to the blender. The finished powder was slugged into tablets, which were ground again and made into tablets in dog bone shapes. Example 2 and Table 2 gives further information as regards the size of ground particulates which are compressed in tablets.

Consequently, D3 does not disclose praziquantel in particulate form coated with a lipid or mixture of lipids, but discloses particulates comprising a mixture of inter alia praziquantel and minor amounts of lipids; having regard to the process of preparation and the respective amounts of praziquantel, lipids and also of the remaining components, in the Board's view there is no reason to assume that said lipids form a coating; there is therefore no disclosure in D3 of praziquantel in particulate form coated with a lipid or mixture of lipids as required by claim 1. The Board agrees furthermore with the appellant that the magnesium stearate and stearic acid are in fact incorporated in the tablets disclosed in D3 as lubricants.

1.3 The claimed subject-matter is therefore novel over D3.

2. Remittal to the examining division

As mentioned above, the subject-matter of present claim 1 is novel. However, the main request has not yet been examined with regard to other requirements of the EPC, such as inter alia inventive step, since the decision of the examining division only related to novelty.

Under Article 111(1) EPC, the Board may in the present case either proceed further with the examination of the application, or remit the case to the examining division for further prosecution, for examination inter alia of the inventive step.

Since the present appeal was pending on 1 January 2020, the revised version of the RPBA applies (OJ EPO 2019, A63), subject to the transitional provisions set out in Article 25 of said RPBA. In particular Article 11 RPBA 2020 is applicable. Article 11 RPBA 2020 provides 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. The Board holds that such special reasons are apparent in the present case.

The provision of Article 11 RPBA 2020 has indeed to be read in conjunction with Article 12(2) RPBA 2020, which provides that it is the primary object of the appeal proceedings to review the decision under appeal in a judicial manner (see also T 1966/16, point 2.2 of the reasons, T 0547/14 points 7.1 and 7.2, and T 0275/15 point 4.). This principle would not be respected if the Board were to conduct a complete examination of the application.

As discussed above, in the present case the examining division decided only on the question of novelty in view of D3 and did not consider the further issues of inter alia inventive step and clarity which were mentioned in the communication of the examining division dated 17 November 2014. Under these circumstances, the Board considers it appropriate to exercise its discretion under Article 111(1) EPC and to remit the case to the department of first instance for further prosecution.

Order

For these reasons it is decided that:

1. The decision is set aside.

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


This decision T 0294/16 (pdfhas European Case Law Identifier:  ECLI:EP:BA:2020:T029416.20200910The file wrapper can be found here. Photo by S. Hermann & F. Richter  (Pixel2013obtained  via PixaBay under the Pixabay license (no changes made).














4 comments :

  1. Ok ok, I am becoming more and more sarcastic the more decisions I read, but could the department of first instance not have risen other objections earlier? I mean woudln't it be fair now if the Board simply granted the patent and considered other potential objections from the ED such as nventive step as late filed? Nothing has prevented the ED from formulating such objections earlier as "auxiliary objections" and procedural efficiency is the highest goal at the EPO after all...

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  2. @Anonymous:
    The EPO would violate its public duty if it granted patents on applications that it knows have not been fully examined. Examination proceedings are not EPO vs applicant but the public vs applicant. The EPO has no authority to "simply grant" a patent. For sure the EPO should strive to come to quick decisions, but when it does not succeed in that, that is not a reason to grant a patent on an unexamined application.

    As to procedural efficiency, if the claim is not new it may well be more efficient for society as a whole if the ED spends its time on examining other applications than to formulate further inventive step objections against the claim that was anyway not new.

    (I am not expressing an opinion on this particular case. Perhaps the ED should have known better than to raise this particular novelty objection. I did not study the case.)

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  3. Hi Anonymous, I do understand this. But I am because sarcastic because there is an imbalance in the proceedings as a lot of seemingly sensible actions come with the risk of being considered "too late" IF THEY COME FROM THE APPLICANT. So if the applicant is required to frontload a case with all possible and impossible requests, I was joking that the same should apply to the office/ED as well. Procedural Fairness :D

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  4. The story behind Art 11 RPBA206 November 2020 at 15:06

    When looking at case law in matters of Art 11 RPBA20, there is no change to be noticed when it comes to remittal.

    When discussing the RPBA20, the BOAC wanted to limit to a minimum remittals. One of the members of the BOAC explained in December 2018 that his court needs to remit as it does not have technical judges, but the BA having technical judges they should not remit. The only exception which was allowed was in case of a substantial procedural error.

    Here we have a procedural error and hence the remittal is absolutely necessary. Procedural efficiency is acquired for the EPO higher management when a case is dealt with as quickly as possible and contributes to achieving the production objective. A substantial procedural violation is merely a bad side effect of this quest for figures.

    Beside a substantial violation, there are other situations which warrant a remittal: if the first instance decides under Art 54, 83 or 123(2) but the BA disagrees. If the BA would not remit, it would have to deal with the whole file for the first time in appeal. This would however go against the aim of the RPBA 20 that is to reduce the backlog of files waiting to be dealt with in appeal.

    The BA sometimes decide on all the issues when the appeal is about a decision from an ED, but extremely rarely when the decision was taken by an OD.

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