Key points
- Rule 103 again, but this time good old Rule 103(1)(a): substantial procedural violation.
- The alleged substantial procedural violation is that the OD did not admit certain auxiliary requests. However, the patentee as appellant also maintained the claims as granted as main request, before the OD and before the Board, and defended novelty of the claims as granted in appeal.
- The Board does not grant the reimbursement of the appeal fee, because of the requirement that the reimbursement must be 'equitable' under Rule 103(1)(a): “Regardless of whether the behaviour of the opposition division may have constituted a procedural violation, the board notes that it did not affect the proceedings before the opposition division as a whole but only the auxiliary requests. To have the opposition division's decision on the main request reviewed, the patent proprietor had to file an appeal anyway.”.
- “For the reimbursement of the appeal fee to be equitable, there has to be not only a substantial procedural violation but also a causal link between this procedural violation and the necessity to file the appeal (see "Case Law", V.A.9.7.1, for instance, decision T 792/12, Reasons, point 10.3.1). .... In this case, there is no such causal link. The patent proprietor's appeal is primarily directed at setting aside the first-instance decision refusing their main request that the opposition be rejected. Since this issue is not affected by the alleged procedural violation, a reimbursement of the appeal fee would not be equitable. The board observes that it is indeed true that [-] under these circumstances and in view of the requirement of a causal link set out above [-] the question of whether the reimbursement of the appeal fee is equitable may depend on the extent of the appellant's appeal.”
https://www.epo.org/law-practice/case-law-appeals/recent/t181174eu1.html
Consequently, auxiliary request 7 meets the requirements of Article 123(2) EPC.
9. Remittal to the opposition division
The remittal of the case to the opposition division is within the discretion of the board according to Article 111(1) EPC.
The subject-matter of claims 1 and 8 of auxiliary request 7 has not been examined by the opposition division as to its patentability. The amendments that led to these claims are such that the interpretation of the claims is bound to change. In particular, it is questionable whether the claims cover an ID document in which the security material covers the entire image area. This may raise new questions, such as whether document D3 is still the most relevant piece of prior art for the examination of novelty and/or inventive step. Moreover, none of the parties had submitted substantiated arguments in favour of or against the patentability of the claimed subject-matter of auxiliary request 7 prior to the oral proceedings before the board. Therefore, in accordance with Article 11 RPBA 2020, special reasons present themselves for remitting the case to the opposition division for further prosecution.
source http://justpatentlaw.blogspot.com/2021/09/t-117418-equitable-and-causal-link.html
