If a new citation (such as an anticipatory document) is filed during opposition appeal proceedings, the question arises whether the case is to be remitted to the department of first instance. In board of appeal case law (see T 258/84, OJ 1987, 119; T 273/84, OJ 1986, 346; T 215/88, T 611/90, OJ 1993, 50; T 621/90, T 166/91, T 223/95), the prevailing view is that, if a document filed for the first time in opposition appeal proceedings is relevant enough to be taken into consideration, the case should as a rule be remitted under Art. 111(1) EPC 1973 to the department of first instance so that the document can be examined at two levels of jurisdiction and the patent proprietor is not deprived of the possibility of subsequent review. However, it is established board of appeal practice that where the board comes to the conclusion that the document is not such as to prejudice the maintenance of the patent, the board may itself examine and decide the matter under Art. 111(1) EPC 1973 (T 326/87, OJ 1992, 522; T 416/87, OJ 1990, 415; T 626/88, T 457/92, T 527/93, T 97/90, OJ 1993, 719).
In T 611/00 the appellant relied on the same grounds of opposition as it had at first instance, but it based its appeal on completely new evidence. The board held that in order to admit this new evidence it had to balance two demands of public interest, that of procedural fairness and that of preventing unwarranted monopolies. If the board found that the documents should be taken into account, it had to ensure that the respondent received fair procedural treatment in the further conduct of the case. Therefore the request for the case to be remitted to the department of first instance had to be allowed.
In T 736/01 the board stated that since it was not the function of an appeal to examine and decide upon a fresh case resulting from the newly submitted and admitted prior art (see T 26/88, OJ 1991, 30; T 611/90), it would exercise its discretion under Art. 111(1) EPC 1973 and remit the case to the opposition division.
In T 361/03 a document submitted by the appellant (opponent) one month before the oral proceedings fundamentally altered the factual framework of the case under appeal. The board admitted the document but held remittal justified. This had the twofold purpose of allowing this fresh case to be examined at two levels of jurisdiction and of giving the respondent a reasonable opportunity to consider possible fallback amendments and possible evidence that could be produced in defence of such amended requests.
However, according to the board in T 764/07 it is the established jurisprudence of the boards of appeal that an appellant has no absolute right to have each individual issue considered by two instances, Art. 111(1) EPC leaving it to the discretion of the board whether to exercise any power within the competence of the department of first instance or to remit the case to that department. In T 1913/06, for example, documents filed with the opponent/appellant's grounds of appeal were admitted into the proceedings and the respondent's request for remittal refused, taking into consideration the imperative of procedural efficiency and the public interest in a streamlined and efficient procedure. The patent (which had been granted 4 years earlier) was revoked on the basis of the admitted documents. See also T 1007/05.
In T 1070/96 the board stated that even though, as a rule, a case should be remitted to the department of first instance if a new document is so relevant that it has considerable influence on the decision to be taken, a remittal is not appropriate if the board is able to deduce from the reasoning of the decision under appeal how the opposition division would have decided had it known of the late-filed document.
In T 111/98 the board held that the amendment of the claims in response to the citation of a new document during appeal proceedings was not as such a sufficient reason to remit the case to the department of first instance. Remittal remained at the discretion of the board.