Abstract on Art 11 RPBA 2020 for the decision T2907/18 of 08.12.2022

In T 2907/18 the board overturned the opposition division's finding that feature P7 of claim 1 was to be understood as a product-by-process feature and therefore held that claim 1 of the patent lacked novelty. In the opinion of the respondent (patent proprietor), this constituted special reasons within the meaning of Art. 11 RPBA 2020, justifying remittal of the case to the opposition division without the board considering admissibility or allowability of any of the auxiliary requests. The board noted that the different interpretation regarding feature P7 was not raised for the first time by the board, but rather also by the appellant who was confronted with the product-by-process interpretation of the opposition division for the first time at oral proceedings before the opposition division. The consequence of the board finding that feature P7 was clearly not a product-by-process feature was merely that claim 1 was interpreted to have a broader scope than that seen by the opposition division. Such a broader interpretation of a feature, however, was not in general seen as an exceptional circumstance justifying a departure from established practice of remitting a case only on the basis of a request found to meet at least Art. 84 and 123 EPC. The respondent's further argument that the board's conclusion represented a complete reversal of the reasons on which the decision was based and that the three examiners in the opposition division were technical specialists in that particular technical area such that these should be tasked with the new situation based on the board's finding, was also not accepted as a reason for remittal.