9.3.5 Remittal following amendments to the claims
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). |
In T 1443/15 the decision under appeal was confined to an assessment of added subject-matter under Art. 100(c) EPC and Art. 123(2) EPC. The set of claims of the main request before the board had overcome the related issues. Having regard to the board's function of reviewing the decision under appeal and given that two of the parties had explicitly requested remittal, the remaining party had not objected to remittal and the opposition division had not ruled on the issues of novelty, inventive step and sufficiency of disclosure, the board considered that there were special reasons for remitting the case to the opposition division for further prosecution.
In T 1174/15, the board held that remittal to the opposition division was justified as auxiliary requests 1-3 had not been dealt with in the contested decision or commented on by the opposition division. Moreover, the respondent had requested remittal and the appellant had withdrawn its request to the contrary.
In T 1174/18 the board remitted the case to the opposition division despite the parties' preference against remittal. The subject-matter of auxiliary request 7 had not been examined by the opposition division as to its patentability. In particular it was questionable whether document D3 was still the most relevant piece of prior art.