Monday, February 08, 2021 T 353/18 - no legal primacy of a clean request over the annotated version

Almost identical, but not quite

With its response to the statement of grounds of appeal, the patent proprietor (respondent) filed, inter alia, an auxiliary request 3, in a clean and a mark-ed up version. Unfortunately, unbeknownst to any one, these two versions were not the same. 

At the oral proceedings the differences came to light. The appellant had used the the annotated version, which happened to contain impermissible added subject matter. The respondent declared that the clean version was the valid version, which happened not to contain said added subject matter. In the end, the board assumed an honest mistake and remitted the case.

 The board provided the following catchword:

Discrepancies between the clean and the annotated versions of a request: no provision in the EPC establishing any legal primacy of the clean version over the annotated version; special reasons justifying a remittal (reasons: section 8)

Tuesday, March 10, 2020 T 3247/19 - How special does it need to be under RPBA2020?

In the present case, the appellant requested that the appealed decision be set aside and that the case be remitted to the examining division. However, with the RPBA revision, the rules for remittal changed. Art. 11 RPBA2007  provided "A Board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise". Art. 11 RPBA2020 however provides "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." OJ Suppl 2, 2 "Table setting out the amendments to the RPBA and the explanatory remarks" explained that "The aim of the new provision is to reduce the likelihood of a "ping-pong" effect between the Boards and the departments of first instance, and a consequent undue prolongation of the entire proceedings before the EPO. When exercising its discretion under Article 111 EPC, the Board should take account of this aim." and "Whether "special reasons" present themselves is to be decided on a case-by-case basis. If all issues can be decided without an undue burden, a Board should normally not remit the case. According to the second sentence of proposed new Article 11, where a Board ascertains that a fundamental deficiency is apparent in the proceedings at first instance, it will normally remit the case." The new version of Art. 11 applies to any appeal pending on, or filed after, the date of the entry into force (Art. 25(1) RPBA2020); however, not all decisions issued since 1/1/2020 expand on whether there are any specials reasons for remitting, and why (not).  The current deicison does.

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, July 31, 2015 T 1929/12: decision deficient enough for a remittal to the first division?

"The decision of the Examining Division is incomplete and, thus, this is a fundamental deficiency in the first instance proceedings" according to the Appellant. The Board of Appeal is requested to remit this case back to the first division. In this appeal, which lies from a decision of the Examining Division, the decision of the Board op Appeal starts with a reasoning whether the case has to be remitted to the Examining Division in view of the objections of the Appellant and in view of all documents in the file of the case. For the interested reader: the full text of the decision also discusses substantive aspects of the case.