9.3.2 Non-examined patentability issues
This section has been updated to reflect case law and legislative changes up to 31 December 2023. For the previous version of this section please refer to the "Case Law of the Boards of Appeal", 10th edition (PDF). |
Where boards would have to examine patentability issues for the first time, they remit the case if examining these issues constitutes an undue burden. The boards decide on a case-by-case basis whether there are any special reasons within the meaning of Art. 11 RPBA 2020 and that is not the case if all the relevant issues can be decided on without undue burden.
Where the basis required to decide on the key patentability issues can only be established in further examination proceedings, this is considered an undue burden (T 1531/16; see also T 601/19, T 2669/17).
A typical scenario is where there is a sole ground for refusal mentioned in the contested decision (e.g. only insufficiency of disclosure) and there are no substantive arguments in the appeal proceedings relating to any patentability issues other than on the sole ground for refusal. If the board considers that there are further open issues relevant to patentability, e.g. the examination of novelty, inventive step and clarity, the appeal cannot be decided upon without undue burden (T 3247/19; see also T 1650/19).In T 578/16 the board stated that ruling on novelty and inventive step for the first time on appeal would constitute an undue burden and run counter to the very purpose of a judicial review within the meaning of Art. 12(2) RPBA 2020 (see also T 411/17).In T 131/18, the outstanding issues were too complex to have been handled by the board from scratch without undue burden.