Remittal in opposition appeals: the ‘ping-pong’ carries on
The European Patent Office’s (EPO) revised Rules of Procedure of the Boards of Appeal (RPBA 2020) came into force on January 1, 2020. One of the revised rules covered “remittal”—the practice of a Board of Appeal sending the case back to the department of first instance (the Opposition Division for oppositions) to continue examination.
The Opposition Division almost always examine the grounds of opposition against a patent in the same order: added subject matter, insufficient disclosure, novelty, and then inventive step.
If the patent falls on added subject matter the examination stops and no decision is taken on the later grounds. If the Board of Appeal then overturn the added subject matter decision, they have the discretion to examine the remaining grounds themselves. However, the long-standing practice has been to send the case back to first instance to examine the other grounds.
This practice ensures that the parties are heard on all grounds at both instances. It also opens up the possibility of a case “ping-ponging” between a board and the Opposition Division, delaying the procedure for years.
The rule change
Previously, remittal was left entirely to the discretion of the Board of Appeal, except in cases where a fundamental deficiency, such as a procedural violation, had occurred.
In contrast, the rules introduced in January 2020 (article 11 of the RPBA 2020) state that the board shall not remit “unless special reasons present themselves”. The phrase “special reasons” suggests that remittal should be the exception rather than the rule.
The notes accompanying the revised rules make clear that the intention of the change is to avoid such a ping-pong situation. The expectation is that if all the issues can be decided without undue burden, a board should not remit.
The reaction
How have the boards reacted to this change? Looking through opposition appeal cases where remittal was an option, we can see how the boards are applying the new rule.
We reviewed 21 opposition appeal decisions where remittal was considered. Among these, 20 cases were remitted for further prosecution on grounds not considered in the appealed decision.
In each of those 20 cases, the boards relied on similar reasoning. They regularly referred to article 12(2) RPBA 2020, which makes clear that the primary purpose of the appeal procedure is to review the decision at first instance, prioritising this rule over article 11. They also regularly pointed out that it would put an undue burden upon the board to carry out the initial examination of a ground not considered in the appealed decision.
In some of the cases, one or both parties had not provided any argument during the appeal procedure in relation to the other grounds, focusing only on the grounds in the appealed decision. In such cases, the boards also pointed out that there were no arguments before them which would allow them to take a decision.
