T 305/08 – Special Reasons (Not To Remit)

In a preceding post, we have seen that the Board admitted two third party interventions, each of which raised new issues, in particular under A 100(c). This made the patent proprietor request a remittal to the Opposition Division (OD).

NB : All legal provisions refer to the EPC 1973.

[2.1] The respondent requested that, if the Board concluded that the interventions were admissible, the case should be remitted back to the OD not only for consideration of the new ground of opposition as should normally be the case in accordance with G 1/94 [13], but also the new evidence raised in respect of the grounds under A 100(a) and (b).

[2.2] In regard to a new ground of opposition under A 100(c), it is noted that the Enlarged Board of Appeal (EBA) stated in G 1/94 [13] that if a fresh ground for opposition is raised by the intervener the case “should be remitted to the first instance for further prosecution unless special reasons present themselves for doing otherwise, for example when the patentee himself does not wish the case to be remitted.”

It is clear from this statement, that the EBA foresaw further situations where remittal to the first instance might not be suitable.

The Board finds that in the present case a special reason for doing otherwise exists.

[2.3] The objections raised by the appellant under A 100(b) already gave rise to serious doubt as to the allowability of the claims. Indeed the Board stated this in its communication prior to oral proceedings (OPs). Since A 100(b) was a matter which had already been decided by the OD, the Board found it suitable not to remit the case only because further opponents had now provided new lines of argumentation within this ground of opposition. Thus the Board found that examination of all the objections under A 100(b) was appropriate.

[2.3.1] Although the respondent argued that the subject matter of claim 1 could only be considered under A 100(b) once a form of claim had been arrived at which fulfilled the requirements of A 100(c), the Board finds that A 100(c) requirements do not outweigh the requirements under A 100(b), nor that there should be a presumption that the claims would necessarily be found unallowable under A 100(c) and thereby result in amendments which would also obviate any problems under A 100(b).

[2.3.2] It also should not be overlooked that in the infringement proceedings in Germany an interlocutory injunction had already been enforced, and that the Düsseldorf Landgericht had requested the EPO to accelerate proceedings. Although it is correct that the Landgericht Düsseldorf could have stayed its proceedings until an outcome had been reached after remittal of the case to the EPO first instance and possibly also after a further appeal, this is generally undesirable in the interests of legal certainty and in the existence of a prima facie problem with A 100(b) which objection had already been examined by the OD, unjustified.

It is thus of no consequence that opponent 3 would allegedly suffer no disadvantage due to a bond having been placed by the respondent with the Court.

Likewise, the respondent was not unfairly disadvantaged by the lack of a remittal, since the appellant had already objected under A 100(b) and the reasons of the OD were already given in the decision under appeal. It should also be noted that absent any intervention, that ground would anyway have been considered by the Board.

[2.4] That being the case however, the Board instructed the parties at OPs that it would, as a first step, not take into account any fresh evidence introduced by the interveners in relation to A 100(b) with their interventions or subsequent submissions, and would reconsider the matter of remittal only if use of any such fresh evidence were required.

The rest of the decision is also well worth reading, in particular the passages dealing with the insufficiency of disclosure of the main request (paragraph [3] of the reasons) and the refusal to adjourn the OPs (even to the next day, although the OPs had been arranged to last until that day ; paragraph [6] of the reasons). The Board finally revoked the patent.

Should you wish to download the whole decision, just click here.