Résumé de EPC2000 Art 113 pour la décision T0737/20 du 18.10.2023

During the oral proceedings in T 737/20 the board informed the parties that it had decided not to remit the case to the opposition division and intended to deal with the issue of inventive step itself. Subsequently, the appellant raised an objection under R. 106 EPC to the effect that its right to be heard under Art. 113 EPC had not been respected. The appellant argued that the board's refusal to remit the case to the opposition division in accordance with Art. 11 RPBA infringed both Art. 112a(2)(c) and (d) EPC. According to the appellant, Art. 112a(2)(c) EPC was infringed because the patentees' request to have the question of inventive step examined at two different levels of jurisdiction had been refused and Art. 112a(2)(d) EPC was infringed because the refusal of the request to remit the matter to the opposition division was a fundamental procedural defect in view of Art. 11, 12(2) and 23 RPBA. The board dismissed the objection. The board found that there were two reasons why no violation of the right to be heard had occurred in the oral proceedings. Firstly, the appellant had been heard on the issue of remittal. Indeed, it had been given and had taken advantage of multiple opportunities both in writing and during the oral proceedings to comment on whether the case should be remitted to the opposition division for further prosecution. Furthermore, it had been given and had taken advantage of multiple opportunities both in writing and at the oral proceedings to comment on the respondents' objections on inventive step. Secondly, where a board opts not to remit a case and to decide the case on the merits, there was no legal obligation under Art. 113 EPC to hear the parties on this matter. The right to be heard was not an end in itself. A party had to be heard on matters, whether substantive or procedural, only if these lead to decisions which could adversely affect the legitimate interest of that party. While deciding to remit a case to allow issues to be decided by two instances is one of the two options under Art. 111(1) EPC, it had to be remembered that the boards of appeal had the final say on the allowability of claim requests. Deferring a decision by the board on the allowability of a claim request through a remittal could not be regarded as a legitimate interest of a party. No party was adversely affected by a board's decision to decide the case itself. Any potential adverse effect would be due to other, later decisions taken by the board, e.g. on the merits of the case or on the admittance of new requests or objections. As a consequence, even though the board had considered the extensive submissions of the parties on the issue of remittal, this had not been legally necessary. The board furthermore held that not remitting the case to the opposition division for further prosecution for consideration of inventive step of claim 1 of the patent was not a fundamental procedural violation in view of Art. 12(2) RPBA. As emphasised in Art. 11 RPBA and contrary to the appellant's view, Art. 12(2) RPBA did not preclude boards of appeal from dealing with matters not dealt with in the decision under appeal. Instead, the boards had discretion on this under Art. 111(1) EPC. For the sake of completeness, the board noted that the list of grounds for a petition for review in Art. 112a EPC and R. 104 EPC was exhaustive. The "other" fundamental procedural defects referred to in Art. 112a(2)(d) EPC could only arise from either a failure to arrange for the holding of oral proceedings requested by a party (R. 104(a) EPC) or a failure to decide on a request relevant to the board's decision (R. 104(b) EPC). Therefore, even if the appellant's understanding of Art. 12(2) RPBA were correct, the alleged violation of the procedural principle that the appellant had inferred from that provision would not qualify as a ground for filing a petition for review.