9.3.3 Procedural economy

Procedural economy and minimising overall duration of the proceedings concerning a patent or patent application are principles underlying Art. 11 RPBA 2020. However, there are cases in which other considerations outweigh them. In particular where the board would have to examine certain issues for the first time (as a result of a procedural violation or otherwise), boards have made clear that procedural economy is only one of the considerations when deciding whether there are special reasons for remittal (T 2002/17, T 1028/17).

Where the main request in appeal proceedings is different from the patent maintained as amended but the opposition division has exhaustively discussed all the requirements of the EPC that are likewise relevant for assessing the main request, for reasons of procedural economy in particular, it is expedient and reasonable to use the discretion under Art. 111(1) EPC and Art. 11 RPBA 2020 for the board to examine and rule itself on the objections raised by the opponent (T 1561/15). Procedural economy in itself can speak against remittal, in particular where it is coupled with the interest of legal certainty in the case of a patent that is close to expiry (T 368/17).

Where on the other hand the department of first instance has not already discussed all the relevant issues, the scales might tip the other way. For instance in T 350/17 the board considered that, in the case in hand, the patentee's request to have the question of inventive step examined at two different levels of jurisdiction took precedence over procedural economy, because the patentee had been deprived of a decision at first instance on this matter as a result of the substantial procedural violation.

In T 894/20 the board observed that inventive step was not among the reasons for the appealed decision. As the primary object of appeal proceedings was to review the decision under appeal, the board considered this, and the fact that the case had been taken considerably out of turn, meaning there were another 14 years of a potential 20-year patent term left to run, to be special reasons for remitting the case to the examining division.

In T 2017/16 the board remitted the case to the opposition division for consideration of the ground for opposition of lack of inventive step, even though this would inevitably lengthen the proceedings and cause the parties additional costs.