9.3.2 Non-examined patentability issues
In T 1531/16 the board held that it was to be decided on a case-by-case basis whether there were any special reasons within the meaning of Art. 11 RPBA 2020 and that this was not the case if all the relevant issues could be decided on without undue burden. With that in mind, the board considered all the relevant circumstances in the case in hand and concluded that the key patentability issues could not be decided on in the appeal proceedings without undue burden. The basis required to do so could instead be established only in further examination proceedings (see also T 601/19, T 2669/17).
In T 3247/19 insufficiency of disclosure was the sole ground for refusal mentioned in the contested decision. As there were no substantive arguments present in the appeal proceedings relating to any patentability issues other than Art. 83 EPC, the board could not come to a decision regarding further patentability requirements on the basis of the current appeal case alone. The board was aware that, according to Art. 11, first sentence, RPBA 2020, a remittal for further prosecution should only be undertaken exceptionally, when special reasons apply. After considering all the relevant circumstances of the case at hand, the board came to the conclusion that the issues relevant to patentability in the case in hand, including but not limited to the examination of novelty, inventive step and clarity, could not be decided upon without undue burden (see also T 1650/19).
In T 578/16 the board stated that ruling on novelty and inventive step for the first time on appeal would constitute an undue burden and run counter to the very purpose of a judicial review within the meaning of Art. 12(2) RPBA 2020. See also T 411/17.
In T 131/18, the outstanding issues were too complex to have been handled by the board from scratch without undue burden.