EPO: Remittal for further examination of auxiliary requests not dealt with at first instance

Pursuant to Article 111(1) EPC, the Board of Appeal either acts within the competence of the department which issued the decision or remits the case to the department of first instance for further decision. According to Article 11 of the Rules of Procedure of the Boards of Appeal (RPBA), a Board of Appeal remits the case for further decision to the organ which issued the contested decision if there are special reasons for doing so. Such reasons usually exist if the proceedings before that instance have shown significant deficiencies or if there are untested questions of patentability. This applies in particular if the opposition division has not examined all grounds for opposition. In such a case, the Board of Appeal would inevitably exceed the legal framework of the first instance decision, since the various grounds for opposition under Art 100 lit a-c EPC against the patent are to be regarded as independent legal bases. In contrast, auxiliary requests that have not been examined or further lines of attack against a patentability requirement that has been examined in itself do not normally constitute special grounds. 

There is no legal entitlement to a decision on all questions in two instances. In particular, since the acknowledgement of such a claim could foreseeably lead to a large number of remittals and subsequent appeals, which the Board of Appeal considers to be an obviously unreasonable result. The aim of the appeal proceedings should be to reach a decision that is binding for all parties. In cases where this requires the first-time treatment of new facts or new submissions, a balance must be struck between the desirability of dealing with the matter in two instances and the equally desirable efficiency of the proceedings. The practice of the Board of Appeal tends to deal with newly filed auxiliary requests relating to grounds of opposition already dealt with in the opposition division without remittal, but to remit them if it would be necessary to discuss grounds of opposition not dealt with in the first instance (EPO-BoA, 23. 2. 2024, T 884/22).