Incorrect use of discretion by Opposition Division leads to remittal under the old RPBA

The revised Rules of Procedure of the Boards of Appeal (RPBA) are set to come into force on 1 January 2020. One of the aims of the revised RPBA is to reduce the likelihood of ping-ponging between the Boards of Appeal and the departments of first instance, and consequent undue prolongation of the entire proceedings before the EPO. To that end, Article 11 of the revised RPBA states that the Boards of Appeal shall not remit a case to the department of first instance, unless there are “special reasons” for doing so. Article 11 of the revised RPBA further states that “fundamental deficiencies” in the first instance proceedings will as a rule constitute “special reasons” but the precise ambit of the phrase “fundamental deficiencies” remains to be seen. In the case at hand, notably decided prior to the revised RPBA coming into play, incorrect use of discretion by the Opposition Division was held to be enough for remittal to be ordered.

Title	The Unitary Patent Court – Can We? Will We?

T 688/16

T 688/16 relates to an appeal of the Decision of an Opposition Division to revoke EP2053959, a patent related to a method for assessing and guaranteeing the thermal hygiene efficiency in a multi-tank dishwasher, in the name of Meiko, a German dishwasher manufacturer.

The patent was opposed by a rival German dishwasher manufacturer but prior to Oral Proceedings the Opposition Division issued a preliminary opinion which was in favour of the Patentee.

However, despite the positive preliminary opinion, during Oral Proceedings, Meiko's Main Request was rejected on the basis of added subject matter and their First Auxiliary Request was found to lack novelty.

In light of the above-mentioned findings, Meiko attempted to file two further Auxiliary Requests, namely Auxiliary Requests 2 and 3, but the Opposition Division held these requests late-filed and as such they were not admitted into the proceedings. The patent was then revoked.

Meiko subsequently appealed the Decision. In the appeal Meiko relied on Auxiliary Request 3 i.e. one of the Auxiliary Requests held late-filed by the Opposition Division.

The Opponent argued that Meiko's appeal was unsubstantiated because it did not present arguments as to why the Opposition Division should have used their discretion to admit Auxiliary Request 3, rather it just argued that Auxiliary Request 3 is novel.

The Board of Appeal sided with the Patentee and held that the Opposition Division had applied the incorrect law in not admitting the Auxiliary Requests into the proceedings. The Opposition Division had cited Article 114 EPC as basis for not admitting any of the Auxiliary Requests, but the Board held that Article 114 EPC does not relate to Auxiliary Requests and that Rule 116 EPC is in fact the correct legal provision. However, the deadline stipulated in any Communication issued under Rule 116 EPC only applies when there has been a negative Communication from the EPO i.e. a negative preliminary opinion.

As no negative Communication had been issued in the present case, the Board held that the Opposition Division had incorrectly exercised discretion in not admitting Auxiliary Requests 2 and 3 and that the Auxiliary Requests should have been admitted.

Faced with the decision of whether or not to remit the case, the Board of Appeal noted that at the moment remittal to the Opposition Division is to be considered in cases where the Opposition Division has based its decision on a patentability requirement but has not ruled on further objections raised.

In light of the above, following their decision to admit Auxiliary Request 3 into the proceedings, the Board subsequently found the claims novel but then remitted the case to the first instance for consideration of alternative objections raised at Opposition level but not yet considered in the proceedings.

Whether the Board of Appeal would have remitted the case if it had been heard after the revised RPBA come into force is unknown but readers do not have long to wait before cases are heard under the revised RPBA and the meaning of "fundamental deficiencies" within Article 11 of the revised RPBA becomes clearer.

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