a) Issues undecided at first instance but which become relevant during or after appeal proceedings  

Since the main purpose of appeal proceedings is to give a losing party an opportunity to challenge a decision on its merits, remittal in accordance with Art. 111(1) EPC has generally been considered by the boards where essential questions regarding the patentability of the claimed subject-matter have not yet been examined and decided on by the department of first instance. This applies to both ex parte and inter partes proceedings.

In particular, remittal is considered by the boards where a first-instance department has issued a decision against a party based solely on one particular issue which was decisive for the case and left open those that were not or on which comments would have been obiter dicta. This can be the case where at first instance a particular objection determines the fate of the application or patent; in such cases, the department of first instance does not necessarily examine any further objections. Any such further objections can however become relevant where on appeal the objection considered decisive in the first-instance proceedings is overcome or the board overturns the decision on that point (see e.g. T 986/16).

In several such decisions, the board deemed it to constitute special reasons within the meaning of Art. 11 RPBA 2020 for remitting the case, as the board would otherwise have had to examine these objections for the first time.

This current practice is in keeping with the primary object of appeal proceedings of reviewing the decision under appeal in a judicial manner (Art. 12(2) RPBA 2020).The boards have repeatedly pointed out that Art. 11 RPBA 2020 is to be read in conjunction with Art. 12(2) RPBA 2020, which provides that the primary object of the appeal proceedings is to review the decision under appeal in a judicial manner (T 731/17). This principle would not be respected if the board were to conduct a complete examination of the application or patent (T 1966/16; see also T 547/14, T 275/15, T 1077/17, T 1508/17, T 2519/17 and T 3218/19).

In the cases reported in the following sections, the boards found that there were special reasons justifying remittal to the department of first instance.