d) Different interpretation of terms 

Where a board of appeal interprets terms differently than the department of first instance, there can be a different outcome and potentially a different view of how the application or patent should be assessed. These are circumstances in which boards have found that a difference in the interpretation of certain terms ultimately leads to special reasons for remitting the case.

This can present itself in the form of a different interpretation of the prior art. For example, in T 1265/15 the board found that the subject-matter of claim 1 of the main request was novel in view of the disclosure of D1 and thus overcame the reasons for refusal given in the decision under appeal. It also found that claim 1 involved an inventive step in view of D1. Having based these findings on a different interpretation of D1 from that in the decision, the board judged it appropriate to remit the case to the examining division for further prosecution, so that it had the opportunity to reassess the invention in view of the other prior art on file.

Another scenario is where the board has a different interpretation of the claims. In T 2024/15 the examining division had based its inventive-step objection on an interpretation of claim 1 which was not in line with either the normal meaning of the terms used or the description in the application. Thus, if the board decided not to remit the case to the department of first instance, it would have to carry out a full examination of the application as to the patentability requirements on the basis of the correct interpretation of the claims. This, however, was the task of the examining division (see G 10/93, OJ 1995, 172). The board would even have to determine whether an additional search was necessary. Hence, it concluded that the issues relevant to patentability in this case could not be decided upon without undue burden (see T 3247/19) and, despite the long duration of the proceedings, remitted the case to the department of first instance.

In T 607/17 the board interpreted the wording of claim 1 differently from the opposition division, namely in a substantially broader sense. The facts of the case were fundamentally changed by this new interpretation of the claim wording. The consequence was that the subject-matter of claim 1 of the main request lacked novelty over D1, whereas the appealed decision had concluded that neither D1 nor any other available prior-art document anticipated this subject-matter. This meant the board would have to assess the patentability of the subject-matter of claim 1 of the auxiliary requests on the basis of this new interpretation of the claim wording for the first time. This amounted to a fresh case, and that alone justified remitting the case to the department of first instance for further prosecution.