9.6.2 Same legal and factual framework

In T 418/17 the board stated that, although the primary object of the appeal proceedings was to review the decision under appeal in a judicial manner (see Art. 12(2) RPBA 2020), there was no absolute right to have every issue decided at two instances. In the case in hand, although the decision under appeal was limited to the main request, auxiliary request 1 did not alter the legal and factual framework because it resulted from a combination with a granted dependent claim.

In T 1561/15, the contested decision had maintained the patent as amended on the basis of auxiliary request 3. The opposition division had exhaustively discussed all the requirements of the EPC that were likewise relevant for assessing the new main request. For reasons of procedural economy in particular, the board found it expedient and reasonable to use the discretion conferred on it under Art. 111(1) EPC and Art. 11 RPBA 2020 to examine and rule itself on the objections raised by the opponent.

In T 1355/18, the opposition division had already discussed the novelty and inventive step of a similar request to auxiliary request 1, so no special reasons as per Art. 11 RPBA 2020 presented themselves for remitting the case.

In T 2085/17 the board stated that remitting the case to the examining division pursuant to Art. 11 RPBA 2020, as requested by the appellant, did not seem appropriate. While the board's decision was based formally on a different legal provision, namely Art. 56 EPC instead of Art. 52(2) and (3) EPC (as cited by the examining division), the underlying issue of excluded subject-matter was the same, and the board had reached its finding on the basis of the same facts and arguments, which seemed to be quite clear.

In T 113/18 the board's position was that the respondent's silence could not lead to automatic remittal of the case to the opposition division to decide whether there were any remaining objections likely to prejudice maintenance of the patent; that would deprive the board of the discretion conferred on it by Art. 111(1) EPC, the purpose of which was to weigh up all the circumstances of the case in hand, including, in particular, whether there were any additional contentious issues which had not been brought to its attention. Accordingly, in the absence of any objection raised by the respondent against the main request, the board decided not to remit the case to the opposition division.

In T 464/17 the essential facts and evidence had already been part of the first-instance proceedings, so no fresh case was created.

In T 1388/17 the board did not consider the use of a different secondary document from the one which the opposition division had used in finding that the requests before it lacked inventive step to constitute a special reason for remittal.

The boards’ ruling in the inter partes cases T 1936/16, T 1388/17 and T 2202/19 and the ex parte case T 786/16 similarly could not see any special reasons for remitting the case to the department of first instance.