7.5.3 Ex parte appeal proceedings

In ex parte appeal proceedings too, if a document is relied upon for the first time during the appeal proceedings and it is admitted because it is relevant, the case has normally been remitted to the department of first instance (see e.g. T 28/81, T 837/91, T 389/94).

In T 648/12 the board, in a communication, introduced a new citation (D6) into the proceedings which contained archived screen shots from a manufacturer’s website. It appeared from D6 that the portable training device was sold before the earliest priority date claimed for the application in suit (training device using electronic workout scripts). D6 seemed to be highly relevant for the assessment of novelty and inventive step. The board remitted the case to the department of first instance.

In T 991/01 the examining division sent the appellant a computer-generated translation of a Japanese patent application after the oral proceedings before it, and no copy was kept in the file, so that the board of appeal was unaware of its existence until the appellant referred to it in the oral proceedings before the board. The case was remitted.

In T 1343/12 since it appeared that the assessment of inventive step hinged to a great extent on the true disclosure of D1, the case was remitted to the examining division for re-consideration of the issue of inventive step in the light of a certified translation thereof.

In T 104/15 the appellant requested that the case be remitted to the examining division for further prosecution in the light of newly introduced document D8. Document D8, originating from the appellant, was introduced by the board in reaction to fresh arguments submitted with the statement setting out the grounds of appeal. The board decided not to remit the case and referred to G 10/93 (OJ 1995, 172) stating that, in ex parte proceedings (rather than in inter partes proceedings), the boards of appeal are restricted neither to examination of the grounds for the contested decision nor to the facts and evidence on which the decision was based. The board also was in a position to properly judge the technical content of the claims and the newly introduced prior-art document, and to deal with the merits of the case without remittal.

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