Art. 11 RPBA of the Rules of Procedure of the Boards of Appeal (RPBA) provides that a case shall be remitted to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise. Violation of the principle of the right to be heard is considered to be a fundamental deficiency of first-instance proceedings, and remittal is often ordered accordingly. It is, however, generally acknowledged that there is no absolute right for a party to have every aspect of a case examined in two instances. Other criteria, in particular the general interest that proceedings are brought to a close within an appropriate period of time, have also to be taken into account. There is no obligation for the board to remit the case at issue to the department of first instance (T 1548/11).
In T 1548/11 in the judgment of the board, special reasons spoke against a further remittal of the present case to the opposition division, in particular the length of the opposition (appeal) proceedings to date (including two appeal procedures) and the considerable further delay which would ensue from a remittal. Moreover, it was observed that the appellant whose right to be heard had been violated requested the board not to remit the case to the opposition division but to decide itself on the remaining issue of inventive step. In these circumstances, remittal of the case to the department of first instance would be inequitable. The board thus exercised its discretion under Art. 111(1) EPC 1973 and Art. 11 RPBA in the sense that it would decide itself on the merits of the appeal.
In T 1254/11, the board assumed, arguendo, that both the fact that no decision to enlarge or reduce the opposition division had been added to the publicly available file and the fact that the appointment of the new chairman could only be traced from the internal register of the EPO constituted fundamental deficiencies in the proceedings before the opposition division. However, unlike the situation in T 990/06, it was possible to determine from the file that the division had been lawfully enlarged and, at a later stage, lawfully reduced again. The board considered that these circumstances constituted special reasons for not remitting the case within the meaning of Art. 11 RPBA. The aforementioned fundamental deficiencies, assumed merely for the sake of argument, were of a formal nature. They would not, in the board's view, justify substantially delaying the proceedings.
In T 274/88 the board agreed that where an irregularity has been remedied during appeal proceedings, the matter should still normally be remitted to the department of first instance. However, in this particular case, which was ex parte, the board did not remit because, after correction, the subject-matter of the application was patentable, the appellants had expressly waived their right to have the issues considered at two instances, and the examining division had already indicated that it was favourably disposed on the question of patentability.
Similarly, where the board was able, in ex parte proceedings, to decide in the appellant's favour, remittal was not considered necessary (T 749/02).
In T 1929/12, even though the decision under appeal suffered from a fundamental deficiency within the meaning of Art. 11 RPBA, the board found that no purpose would be served by remitting the case to the examining division, which would most likely eventually have issued another, better reasoned decision to the same effect. This consideration, combined with the fact that both the board and the appellant were able to deal with the decision under appeal in view of the minutes, constituted, in the board's view, special reasons for not remitting the case under Art. 11 RPBA.
In T 2068/14 the board argued that although in this case a fundamental deficiency in the sense of Art. 11 RPBA had taken place, the clarity objection raised by the board with respect to the appellant's claims (Art. 84 EPC) was immediately apparent upon examination of the disclosure of the claimed subject-matter. This constituted a "special reason" justifying not remitting the case to the department of first instance. The board pointed out that it would be contrary to the principles of legal certainty and efficiency to remit a case when the appellant had not adequately dealt with objections raised by the board that would prejudice the grant of a European patent.
In T 427/11 the board held that special reasons spoke against a remittal of the present case to the opposition division, in particular the length of the proceedings to date and the considerable further delay which would ensue from a remittal. Additionally, the opposition division had evidently taken note of all the inventive step objections raised, even though the corresponding reasoning in the decision under appeal was incomplete. Consequently, considering all the relevant facts, the board concluded that a remittal of the case to the department of first instance would be inequitable. The board thus exercised its discretion under Art. 111(1) EPC 1973 and Art. 11 RPBA in the sense that it would itself decide on the merits of the appeals.
In T 679/97 a remittal by a board of appeal for further prosecution on the basis of new evidence was immediately, i.e. without any intervening communication announcing the resumption of proceedings, followed by the rejection of the opposition. Despite this substantial procedural violation by the opposition division, the board decided not to remit, in view of the interest of the parties in having the case finally decided. Under similar circumstances, however, cases have been remitted to the department of first instance, see e.g. T 742/04 and T 1425/05 and in this chapter IV.E.7.4.2 "Violation of right to be heard".
Date retrieved: 24 November 2017