- Length of proceedings
It is generally accepted by the boards that the additional time that would be needed to bring the first-instance proceedings to a close can usually be considered a "special reason" not to remit a case (T 1423/15).
In T 1548/11 in the judgment of the board, special reasons spoke against a further remittal of the present case to the opposition division, in particular the length of the opposition (appeal) proceedings to date (including two appeal procedures) and the considerable further delay which would ensue from a remittal. Moreover, it was observed that the appellant whose right to be heard had been violated requested the board not to remit the case to the opposition division but to decide itself on the remaining issue of inventive step. In these circumstances, remittal of the case to the department of first instance would be inequitable (see also T 1824/15).
In T 679/14 the board stated that the long duration of the proceedings and the fact that this was the second appeal constituted special reasons for not remitting the case in reaction to fundamental deficiencies in the first-instance proceedings.
The board in T 2171/14 refused the appellant-proprietor's request for remittal to the department of first instance despite fundamental deficiencies in the contested decision. It pointed out that a remittal would primarily have resulted in further proceedings before the opposition division which could not be expected to change the substance of the issue and would also have considerably prolonged the total duration of the procedure (unhelpful given pending national infringement proceedings and the appellant-opponent's request for acceleration of the appeal proceedings).
- Age of application or patent
In T 1709/06 the board took the view that remittal to the examining division would be inappropriate given the already advanced age of the application and the considerable further delay which would ensue from remittal. Moreover, the appellant made clear in the oral proceedings its desire for the board to decide on the case.
Likewise in T 1758/15, the board decided not to remit the case to the opposition division because the patent was relatively old and the facts and major lines of arguments were on the table. A remittal would most likely only create a delay of several years, with the board thereafter being confronted with essentially the same case. That would be contrary to procedural efficiency.
- Procedural economy
In T 2068/14 the board argued that although in this case a fundamental deficiency in the sense of Art. 11 RPBA 2007 had taken place, the clarity objection raised by the board with respect to the appellant's claims (Art. 84 EPC) was immediately apparent upon examination of the disclosure of the claimed subject-matter. This constituted a "special reason" justifying not remitting the case to the department of first instance. The board pointed out that it would be contrary to the principles of legal certainty and efficiency to remit a case when the appellant had not adequately dealt with objections raised by the board that would prejudice the grant of a European patent.
- Arguments taken into consideration at first instance
In T 515/05 the board considered that remittal was not appropriate, essentially because (i) the arguments of the appellant had been taken into account in the decision under appeal, (ii) the appellant in the meantime had had the opportunity, and indeed availed itself of it, to expand its argumentation before the board, and (iii) no concrete reason was given by the appellant for the necessity for remittal (e.g. no intention was declared to produce further evidence which would need more time for preparation). In the circumstances a remittal to the opposition division would only unnecessarily delay the proceedings.
In T 1951/16 the appellant explicitly requested the board not to remit the case. Additionally, the department of first instance had evidently taken note of the appellant's case on the question of non-unity, even though the appellant had been deprived of the opportunity to present it orally.
In T 1817/14 the examining division did not admit the second auxiliary request into the proceedings. However, the decision under appeal did not mention the existence of the second auxiliary request, which constituted a fundamental deficiency whithin the meaning of Art. 11 RPBA 2007. The board stated that it was clear that the appellant was heard on the admission of the second auxiliary request, and the missing reasons were contained in the minutes. Therefore, the appellant had been in a position to understand the examining division's reasons for not admitting the second auxiliary request. The board considered these circumstances to constitute special reasons for not immediately remitting the case to the examining division under Art. 11 RPBA 2007.
In T 1929/12, even though the decision under appeal suffered from a fundamental deficiency within the meaning of Art. 11 RPBA 2007, the board found that no purpose would be served by remitting the case to the examining division, which would most likely eventually have issued another, better reasoned decision to the same effect.
In T 427/11, the lengthy duration of the proceedings was not the only special reason for not remitting the case. Additionally, the opposition division had evidently taken note of all the inventive step objections raised, even though the corresponding reasoning in the decision under appeal was incomplete.
- Partiality of a member of the opposition division
In T 1647/15 the board observed that whereas under normal circumstances a potential suspicion of bias concerning a member of an opposition division might be a strong indication for a remittal, this was not the case here where this suspicion did not affect the whole process of decision-making but only arose out of an uncontrolled outburst at the end of exceptionally long and intense oral proceedings. Thus, the board doubted that a remittal to the department of first instance, even in a different composition, would serve the interests of justice, in the sense that the remittal would likely result in the affair growing further in complexity and would cause an excessive delay in having the case finally decided, also taking into account that these were the second appeal proceedings in the case.
- Formal deficiencies
In T 1254/11, the board assumed, arguendo, that both the fact that no decision to enlarge or reduce the opposition division had been added to the publicly available file and the fact that the appointment of the new chairman could only be traced from the internal register of the EPO constituted fundamental deficiencies in the proceedings before the opposition division. However, unlike the situation in T 990/06, it was possible to determine from the file that the division had been lawfully enlarged and, at a later stage, lawfully reduced again. The board considered that these circumstances constituted special reasons for not remitting the case within the meaning of Art. 11 RPBA 2007. The aforementioned fundamental deficiencies, assumed merely for the sake of argument, were of a formal nature. They would not, in the board's view, justify substantially delaying the proceedings.