7.5.2 Opposition appeal proceedings

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 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 253/85; 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 966/95 the board stated that the attribution of a discretionary power would be meaningless if the boards were ipso facto obliged to remit the case whenever new matter was raised in appeal proceedings, irrespective of the nature of such matter. Thus, Art. 111 EPC also conferred the power upon a board of appeal to act inter alia as the first and only instance in deciding upon a case, taking into account a document which was only filed in appeal proceedings, without the possibility of further appellate review. Remittal due to the admission of a new document could, however, be considered if, without remittal, a party would not have had sufficient opportunity to defend itself against an attack based on the new document, or if the factual framework had changed to such an extent that the case was no longer comparable with the one decided at first instance (T 577/97, see also T 111/98, T 98/00, T 402/01 of 21 February 2005, T 148/05).

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