[…] The [patent proprietor] filed amended claims according to eight auxiliary requests. [X]
The [patent proprietor’s] final requests were as follows. Main request: to maintain the patent on the basis of the last main request submitted in the oral proceedings; alternatively, as first to third auxiliary requests: to maintain the patent on the basis of the latest-filed auxiliary requests I, II and III and alternatively, as a fourth auxiliary request: to remit the case to the first instance. [XIV]
Having rejected the main request (as contrary to A 76(1) EPC) and the first, second, and third auxiliary requests (as late filed and contrary to the principle of procedural economy), the Board has to deal with the request for remittal.
Since the board first has to decide on the [patent proprietor’s] higher ranking requests, the question arises as to the basis upon which the case should be remitted to the first instance, as the first instance would be bound by the ratio decidendi of the board, A 111(2) EPC 1973. As the [patent proprietor] cannot reasonably have meant remittal after a decision on the higher ranking requests, the board interprets the fourth auxiliary request as actually meaning that the case should be remitted to the first instance in order to decide on the higher ranking requests. [5.1]
According to A 111(1) EPC 1973, second sentence, the board of appeal 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 board consequently has a discretion as to whether to remit the case to the first instance or not. The relevant jurisprudence of the boards of appeal reflects this discretion, which is exercised according to the circumstances of the individual case. [5.2]
In the present case the board had to decide on an appeal filed against the decision by the opposition division finding, inter alia, that the ground for opposition under A 100(c) EPC 1973 (in conjunction with A 76(1) EPC 1973) did not prejudice the maintenance of the patent unamended. The amendments made in accordance with the main request, which were admitted by the board, had no substantial influence on the meaning, in the given context, of the feature which was found to be contrary to A 76(1) EPC 1973. The relevant issue of the main request thus clearly relates to the case under appeal which was discussed with the parties and which had to be decided by the board. As the board had already come to a conclusion on whether the claims according to the [patent proprietor’s] main request satisfied A 76(1) EPC 1973, and had decided not to admit the [patent proprietor’s] first, second and third auxiliary requests, the board found that remitting the case to the first instance was neither necessary nor appropriate under the circumstances. Hence the board did not allow the [patent proprietor’s] fourth auxiliary request for remittal. [5.3]
Since the [patent proprietor’s] main request is not allowable, the [patent proprietor’s] first, second and third auxiliary requests are not admitted into the proceedings and the [patent proprietor’s] fourth auxiliary request for remittal is not allowed, the patent must be revoked, A 101(3)(b) EPC. [6]
The present decision shows that a Board of appeal will only consider a remittal if it has identified at least one set of claims which appears to have overcome or bypassed the grounds for rejection of the set of claims on file before the first instance. A “blind” remittal based on auxiliary requests the Board has not considered so far is not accepted. In other words, if N requests have been found inadmissible or unallowable, the N+1st (auxiliary) request cannot consist in a request for remittal, or it will be rejected.
What I find surprising, though, is that the Board acknowledges that there are higher ranking requests but nevertheless revokes the patent (apparently) without considering them at all.
To read the whole decision, click here.
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