9. Remittal to the examining or opposition division after appeal

If a decision by an examining or opposition division is appealed, the board of appeal may remit the case to the division under Art. 111(1). In such cases, the exact wording of the orders must be complied with. Various situations may arise:

(a)The case is remitted for grant or maintenance in amended or limited form on the basis of a complete text which has been finally decided by the board. 

(b)The case is remitted for the description to be brought into line with claims whose wording has been finally decided by the board. 

(c)The case is remitted for further prosecution. 

In situation (a) above, grant or maintenance is handled by the formalities officer. , and the dossier goes back to the The division merely for checking provides input by verifying the classification and title and adding any references to supplementary technical information (STIN) or newly cited documents (CDOC). The examining division also carries out a top-up search for national prior rights and provides information about whether any are found to be prima facie relevant, if this has not already been done in the proceedings. This information may assist the applicant in deciding whether to request Unitary Patent protection or choose the traditional validation route (C‑IV, 7.2).

If the applicant requests further amendments under Rule 71(6), the application will be deemed withdrawn under Rule 71(7) as the procedure under Rule 71(6) cannot be applied in view of Art. 111(2).

Where the case is remitted with the order to grant, or maintain, the patent on the basis of documents with handwritten amendments, the formalities officer on behalf of the competent division invites the applicant, or proprietor, to file a formally compliant version of the amended text under Art. 94(3) or Rule 82(2), as the case may be (see E‑III, 8.7.2 and E‑III, 8.7.3 respectively).

In situation (b) above, the board has taken a final decision on the wording of the claims which ends the matter. The division can no longer amend the claims or allow the applicant or proprietor to do so, even if new facts (e.g. new relevant citations) come to light (see T 113/92, Headnote No. 2, and T 1063/92, Headnote, second paragraph). Corrections under Rule 139, however, may still be allowable.

Applicants and proprietors should exercise all possible procedural economy when bringing the description into line with the claims' wording as decided by the board of appeal. Normally, therefore, completely retyped texts will not be accepted (see T 113/92, Headnote No. 1).

In situation (c) above, the division whose decision was appealed is bound by the board's ratio decidendi, in so far as the facts are the same (Art. 111(2)). However, new relevant documents or facts which come to light must be taken into account. In particular:

– the parties must be given the opportunity to submit further requests, and 

– the division must check whether requests from examination or opposition proceedings prior to the appeal (e.g. for oral proceedings) are still outstanding – see T 892/92, Headnote.