Tuesday, October 20, 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. 

Wednesday, January 09, 2019 T 384/15 - Intervention another company from the same group as the opponent: admissible?

Opposition appeal proceedings were pending with a single opponent, Santarelli SA. Early during the appeal proceedings, a first intervention was filed by a first assumed infringer, Bose Gmbh. At a later moment during ther appeal proceedings, a second intervention was filed by a second assumed infringer, Bose Limited. The proprietor objected to the interventions by Bose Gmbh and Bose Limited as both belong to the same group as Santarelli SA, and submitted that these two intervenors were not third parties and that the filed interventions were abuse of law, as a consequence of which the interventions (as well as the opposition) should be considered inadmissible. The Board did not agree. The Board and that the interveners are "third parties", and also that the invoking Article 105 EPC had not been an attempt by the opponent and/or interveners to circumvent the law by abuse of process. The Board held the opposition and both interventions admissible.

Wednesday, January 25, 2017 T 1205/13 - A request that was not decided upon

In the summons to oral proceedings before the Examining Division, the Examining Division objected under Art.56 EPC (inventive step). The applicant then replaced those claims with two new sets, which were refused because of deficiencies under Art.123(2) and 84 (extension of subject-matter and clarity) caused by the amendments. In appeal, the applicant filed the original claims as main request. What did the Board do? No decision was taken in first instance about this claim set, as the applicant replaced them before a decision could be taken - the applicant was adversely affected by the refusal, but the refusal related to the replaced claim. Also, the refusal was based on Art. 123(2) and 84, and not on Art. 56 that the Examining Division held against these claims in its preliminary opinion.

Friday, August 12, 2016 T 799/12 - Clarity in opposition appeal

In this opposition appeal, the proprietor challenged the clarity objection that was raised against claim 1 as amended made during first instance opposition proceedings, but which was only raised with the grounds of appeal. He was however unsuccesful: amendments made during opposition are to be examined for compliance with all EPC requriements and the amendment was based on the description (not just an incorporation of an unclear dependent claim - G 3/14). Further, the board of appeal has the power to examine all EPC requirements, not just the ones on which the decision was based: the Board thus examined clarity, and also admitted new arguments against inventive step based on a document that was not used in any objection before.

Tuesday, April 05, 2016 T 2385/11 - Admitted even though filed very late

During oral proceedings in appeal against a refusal by the Examining Division, the applicant filed a new and sole request. In this decision, the Board indicates quite clearly under which conditions such a very late request can be -and is this case was- admissible.

Tuesday, January 19, 2016 T 399/13 - No why, so inadmissible

When filing the appeal against the decision from the Opposition Division, the appellant filed three new sets of amended claims and arguments as to their allowability, but did not give a reasoning why the appealed decision was wrong. Without this necessary link between the contested decision and the statement of grounds, the appeal was held inadmissible by the Board.