9.9. Remittal for adaptation of the description

Art. 11 RPBA 2020 only applies to cases that are remitted "for further prosecution". In particular, it does not apply to cases that are remitted with an order by the board to grant a patent or to maintain a patent in amended form, be it with or without adaptation of the description (see explanatory remarks on Art. 11 RPBA 2020, Supplementary publication 2, OJ 2020).

In T 1716/12 the board stated that remittal "with a description to be adapted" had become common practice of the boards of appeal and was, effectively, a remittal for further prosecution within the meaning of Art. 111(1) EPC and subject to the limits imposed in Art. 111(2) EPC.

In T 146/17 the board stated that it was customary to remit cases to the department of first instance with an instruction to maintain the patent with an adapted description. It saw no reason to deviate from this standard course of action in the case in hand simply because the patent proprietor had not attended the oral proceedings.

In T 32/16 the board stated that, regarding adaptation of the description to the new claims, the respondent's (patent proprietor's) preference to perform this at the oral proceedings was not followed. The required amendments to the description were seen to be of not inconsiderable scope, and the appellant indicated its need to fully consider any amendments made without being under time pressure. Under these circumstances, the board thus decided to remit the case to the opposition division under Art. 111(1) EPC for the description to be adapted to the claims found allowable. With regard to Art. 11 RPBA 2020, the board noted that remittal of a case for adaptation of the description was not a remittal for "further prosecution", such that no "special reasons" needed to be present (see also T 801/18, T 1968/18).