T 1960/08 – No Remittal Of A Pig In A Poke

[5.1] The Board considers the appellant’s request for remittal submitted by fax dated 2 March 2010 “if the Appeal Board is minded to refuse the Main, First, and Second Auxiliary requests, it be so kind as to allow remittal to the department of first instance so that the appellant can pursue a suitably amended Third Auxiliary request that complies with A 84 and A 123(2), in addition to being novel and involving an inventive step” (emphasis added by the Board) to be unclear for the following reasons:

According to this request it is not known whether such a remittal should be based on the claims of the third auxiliary request, as filed with the grounds of appeal, or on the basis of “suitably amended” claims of said third auxiliary request to be filed in the future.

[5.2] The first alternative would imply that the Board should remit to the first instance a third auxiliary request which it considered not to be allowable under A 84 so that the appellant at the first instance then could amend it to overcome the objections made by the Board.

The second alternative would imply that the Board should remit the case to the first instance on the basis of a “suitably amended third auxiliary request that complies with A 84 and A123(2)” without knowing what the subject-matter of this request should be, since the appellant has not submitted such a “suitably amended” third auxiliary request with its last submission which would meet the requirements of A 84 and A 123(2).

[5.3] An unclear request, however, has to be rejected by the Board. Furthermore, both alternatives represent no basis for an allowable remittal to the first instance.

[5.4] Furthermore, the appellant stated that its request for remittal took account of point 6 of the Board’s communication wherein it was remarked “Provided that a request were to meet the requirements of A 84 and A 123(2) and of novelty, the Board will consider remittal of the case to the department of first instance or may exercise competence for further prosecution, i.e. examination of inventive step” (emphasis added by the Board).

[5.4.1] The proviso in said passage “provided that a request were to meet the requirements of A 84 … “implies that first there has to be a request on file which subject-matter is defined and which fulfils the requirements of A 84, A 123(2) and A 54. Only then the Board may exercise its discretion in accordance with A 111(1) to either remit the case to the first instance or to exercise its competence for further prosecution.

[5.4.2] Since the appellant has not submitted such a request which would meet the said proviso – and thus the requirements of A 84, A 123(2) and A 54 – there is neither a basis for a remittal of the case to the first instance nor for a further prosecution of the case by the Board.

To read the whole decision, please click here.

For a similar decision, click here.