One of the changes to the Rules of Procedure of the Boards of Appeal (RPBA) which came into force on 1 January 2020 was a revision of Article 11. This Article governs the remittal of cases from the Boards to the department of first instance. Under the previous version of Article 11, remittal would often be available when certain grounds were not considered at first instance, or (in opposition) when both parties requested it. However, the revised Article 11 RPBA states:
“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” (emphasis added).
This change in wording seemed to suggest that the Boards would be less inclined to remit a case and so raised the question of whether they would make decisions on issues which had not been decided at first instance. To get a view on how the rules are being interpreted, we have looked at some of the decisions which have been taken since the revised rules came into force.
At this stage, in Examination proceedings the Boards do not appear to have been reluctant to remit cases where there are issues which were not decided at first instance. Examples can be found in T 1966/16 and T 731/17, which have both been cited in subsequent decisions. In T 731/17 the Board stated “Not remitting the case to the Examining Division would require the Board to perform these tasks in both first- and last-instance proceedings and to effectively replace the Examining Division rather than review the contested decision in a judicial manner. It follows that special reasons within the meaning of Articles 11 and 12(2) RPBA 2020 present themselves.”
Also, in T 1616/18 the Board commented in relation to the new Article 11: “this provision has to be read in conjunction with Article 12(2) RPBA 2020, which provides that it is the primary object of the appeal proceedings to review the decision under appeal in a judicial manner… This principle would not be respected if the Board were to conduct a complete examination of the application.” It therefore seems that for Examination Proceedings at least the Boards may continue to remit cases in which there are issues on which no decision was reached at first instance.
The situation is similar for Opposition cases where there are grounds which have not yet been examined at first instance. In T 0786/15 the case was remitted to consider grounds under Art 100(a) which were not considered in the contested decision (and on which the parties did not submit arguments on appeal), but the Board did examine the ground for opposition under Art 100(b) because it was considered procedurally efficient to do so in view of the points considered in the appeal.
In T 1627/17, the Board reasoned as follows:
“2.1 Sufficiency of disclosure was the only ground of opposition discussed at the oral proceedings before the opposition division and it was the only ground of opposition upon which a decision was taken. All the parties present to these appeal proceedings requested the remittal of the case to the opposition division for consideration of the further grounds of opposition that had been raised by the opponent in their notice of opposition (lack of novelty and lack of inventive step – Article 100(a) EPC).
2.2 Although the EPC does not guarantee the parties an absolute right to have all the issues in the case considered by two instances, it is well recognised that any party may be given the opportunity of two readings of the important elements of a case. The essential function of an appeal is to consider whether the decision issued by the first-instance department is correct. Hence, a case is normally to be referred back if essential questions regarding the patentability of the claimed subject-matter have not yet been examined and decided by the department of first instance (Article 111(1) EPC).
2.3 Moreover, the facts under point 2.1 including the common request of all parties are for the Board special reasons in the sense of Article 11 RPBA 2020 for which a remittal of the case to the opposition division for further prosecution is appropriate”.
In general, recent decisions do not reflect a significant change in the behaviour of the Boards with regard to remittal. Looking forward, it should be noted that the rules were changed at least in part with the aim of increasing procedural efficiency. It remains to be seen whether in view of that aim the situation regarding remittal might change as the number of cases decided under the new rules increases.