7.5.6 No remittal to department of first instance

In T 253/85 the board admitted the late-filed document into the proceedings. The document did not introduce any new aspect but was mainly to be regarded as a complement to other documents already considered by the opposition division. The board held that there was, thus, no need to remit the case to the opposition division in order to avoid bypassing one level of jurisdiction (see also T 133/87). In T 852/90 the board rejected the request for remittal because the late-filed evidence amounted to no more than an amplification – albeit a significant one – of the case already canvassed before the opposition division.

In T 1070/96 the board stated that even though, as a rule, a case should be remitted to the department of first instance if a new document is so relevant that it has considerable influence on the decision to be taken, however, a remittal is not appropriate if the board is able to deduce from the reasoning of the decision under appeal how the opposition division would have decided had it known of the late-filed document (see also T 908/07).

In T 887/98 the board held that remittal was not justified: the appellant (patent applicant) had indeed been able to put forward his arguments in proceedings at both first and second instance, and had been given plenty of time to study a document D2 before the oral proceedings. Furthermore, the examining division had found another document to be prejudicial to inventive step, so introducing D2 into the proceedings before it would not affect its decision. Also in T 1122/03 the request for remittal was refused because the introduction of document D8 would not have altered the opposition division’s decision.

In T 1349/13 the patentee requested that the case be remitted because D6 was only admitted into the proceedings on the day of the oral proceedings before the board of appeal. The board decided not to remit the case because D6, which had been filed together with the opponent's statement of grounds of appeal, could not be considered late-filed but had to be seen as an allowable reaction to the opposition division’s admission of the patentee's second auxiliary request into the proceedings.

The board in T 402/01 of 21 February 2005 pointed out that a patent proprietor had no automatic right of remittal after the citation of a new document with the grounds of appeal, even if there was a change in factual framework, at least in cases where the document was filed in reaction to amendment of the claim, providing that both parties' right to a fair hearing was not jeopardised. See also T 1252/05. In T 111/98, implicitly referring to the right to be heard pursuant to Art. 113(1) EPC 1973, it was considered that remittal due to the admission of a new document should be an exception, for example 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 document's admission amounted to a substantial change in the factual framework.

Referring to T 402/01 and also T 111/98, the board in T 1493/06 agreed. In T 1493/06, the board had introduced document D7 at an early stage in the appeal procedure in a first communication, and subsequently issued another fully reasoned objection based on document D7 in the communication accompanying the summons to oral proceedings. The board, applying the criterion of T 111/98, therefore considered that the appellant had had sufficient opportunity to react to the introduction of document D7, so that remittal was not necessary in order to comply with Art. 113(1) EPC 1973.

In T 893/07 the board interpreted T 111/98 to mean that what actually appears to be essential when a board exercises its discretion to remit a case is whether the factual framework has substantially changed during the appeal proceedings. As it had not, remittal was refused.

In T 1007/05 new documents had been introduced into the proceedings and discussed. Under these circumstances the board held that it would only be reasonable to remit a case which had been extensively discussed if exceptional circumstances justified this action, for instance if the introduction of documents into the proceedings had created an entirely new situation.

See also T 577/97, T 111/98, T 98/00 and T 1092/11 for decisions where remittal was refused.

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