EP 3 518 116 relates to a relates to a “layer-based file access” by a virtualisation instance.
Brief outline of the case
The application was refused by the ED and the applicant appealed.
During appeal, the applicant filed several requests. Eventually the board confirmed the refusal.
The MR was filed in response to the board’s communication. It is based on the MR considered in the decision under appeal and maintained in the statement of grounds of appeal with amendments intended to address clarity objections raised in the board’s communication.
At the start of the OP, the applicant requested the case be remitted to the ED for further prosecution on the basis of the main request. This was refused by the board. This refusal of the remittal is the topic of the present blog.
The applicant’s point of view
The applicant argued that the primary purpose of the appeal proceedings was to review the decision under appeal. The board’s communication, which had raised new objections and had introduced a new prior-art document, had necessitated the filing of new requests. To ensure fairness and procedural correctness, the appellant had to be given the opportunity to respond to the new objections and arguments in two instances.
The applicant further argued that a request for remittal could be made at any time.
The board’s decision
According to decision G 10/93, OJ EPO 1995, 172, Reasons 5, if a board of appeal raises new objections, it must decide after due assessment of the particular circumstances whether it will rule on the case itself or whether it will remit the matter for further prosecution to the examining division, cf. Article 111(1), second sentence.
Although the differences between the board’s preliminary opinion set out in its communication and the objections raised in the contested decision may indeed have necessitated the filing of amended requests, in the board’s view its communication did not present the appellant with a significantly different case.
In examination appeal cases, an applicant has to expect the board to analyse the wording of the independent claims for the purpose of assessing inventive step and, if necessary, to identify new issues of clarity and interpretation ex officio.
The board considered that the admissibility and allowability of amendments made in response to such developments should in principle be examined by the board. This is in line with Art 11 RPBA, which provides that a case is not to be remitted for further prosecution, unless special reasons present themselves for doing so.
The applicant initially responded to the board’s new objections by filing amended requests and not by requesting remittal of the case for further prosecution by theED. Only at the OP before the board did the appellant made its request for remittal.
The board mentioned T 1006/21, which holds that procedural requests, including requests for remittal under Art 111(1), are not subject to the provisions of Art 12 and 13 RPBA, and can therefore be made at any time during the appeal proceedings, and have to be considered by the board, regardless of when they are made. The board also noted that the EPC does not provide a comprehensive legal basis for not admitting a request for remittal.
Nevertheless, allowing a request for remittal of a case for further prosecution under Art 111(1) is at the board’s discretion, and the timing of a request for remittal made by a party may well be a factor relevant to the exercise of that discretion. The board referred to T 975/20, Reasons 12.3; T 860/21, Reasons 8; T 850/22, Reasons 1.6; T 1220/22, Reasons 4.
In the present case, the applicant did apparently not consider it necessary to request a remittal for further prosecution when preparing its reply to the board’s communication.
Moreover, when it did request a remittal at the OP, the board had already completed its preparation for those OP, including forming a preliminary opinion on the amendments made in the newly filed MR.
In view of these circumstances, the board saw no special reasons for allowing the appellant’s request to remit the case to the ED . It therefore rejected the appellant’s request and proceeded with the examination of the MR.
Comments
In examination appeal proceedings it is nothing new that the board can raise objections which had not been raised by the ED.
There is also no right for two instances, when new objections are raised. This also applies in opposition when a potential infringer intervenes during appeal. The likelihood that the bord will remit in such a situation is however higher.
The present situation is comparable to that in T 815/17. The difference is that the procedure was in writing and in the applicant requested in writing the case to be remitted as the board had introduced new documents in its communication. This did not withhold the board not to remit.
What the board queried in the present instance, is the fact that the applicant had not raised the request for remittal in writing immediately after having received the board’s communication. This was also the case in T 975/20.
T 860/21 was a decision in opposition, and the board also argued that the proprietor waited the OP to file a request for remittal. In T 1220/21, also in opposition, the proprietor submitted its request for remittal shortly before the OP. This was also considered too late.
When looking at the procedural case law, it is apparent that, in the early days, the boards were more inclined to remit to the first instance. With the present workload of the boards, it is thus no surprise that boards are not inclined to remit, especially if they have reached an opinion on a late but eventually admissible request.
Important information
It is thus important for an applicant or a proprietor to react immediately after receiving a communication of the board raising new objections and/or introducing new prior art. It can even be envisaged to formulate a request for remittal already in the grounds of appeal at the same time as filing an appeal and requesting OP, if any request is not deemed allowable by the board.
Remitting or not, remains in the end, a discretionary decision of a board. It is clear that in case of remittal, the case might end up once again on the board’s desk.
Divergence of views in procedural matters
The position of the boards appear to diverge on T 1006/21, commented in the present blog.
In T 1006/21, Reasons 23 and 24, the board held that any procedural request can be filed at any time and is not subject to the restrictions of Art 12 and 13 RPBA.
Next to the present decision, two decisions have clearly disagreed with T 1006/21.
T 1320/22, commented in this blog and T 1774/21, also commented in this blog. Both strongly disagree with T 1006/21.
Like for deletion of claims, combination of claims and carry-over requests, it would be better for the parties to have some predictable information from the side of the boards in all those procedural matters.
It is just to be hoped that some convergence could emerge from all those different discretionary decisions. This does not seem the case at present.
On the procedure
It is interesting to note that the present board found it necessary to introduce a new document in the present procedure, as well as in T 815/17. If the search would have been complete, the boards should not find the necessity of filing further documents.
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