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In G 4/92 (OJ 1994, 149) the Enlarged Board of Appeal held that, in view of the right to present comments, a decision against a party who had been duly summoned but who failed to appear at oral proceedings could not be based on facts put forward for the first time during those oral proceedings. Evidence put forward for the first time during oral proceedings could not be considered unless it had been previously notified and it merely supported the assertions of the party which had submitted it. However, new arguments could - in principle - be used in the reasons for the decision as they did not constitute new grounds or evidence, but were reasons based on the facts and evidence already put forward. This opinion related only to inter partes proceedings.
The way in which G 4/92 is interpreted and applied in practice is illustrated in a number of decisions.
In T 341/92 (OJ 1995, 373) the board held that it was possible to base a decision on a ground discussed for the first time during oral proceedings which would prevent the patent being maintained as amended, at least if the stage reached in the case was such that the absent - albeit duly summoned - patent proprietors could have expected the question to be discussed and were aware from the proceedings to date of the actual basis on which it would be judged. The appellants (patent proprietors) had filed, together with a statement setting out the grounds of appeal, a main request and an auxiliary request with new claims. However, the appellants - having notified the board to that effect in advance - were not represented at the oral proceedings. During oral proceedings the question of whether the subject-matter of claim 1 in accordance with the main request infringed Art. 123(3) EPC 1973 was brought up by the board for the first time. The board concluded that the main request constituted an inadmissible extension of the protection conferred. At the end of oral proceedings it was announced that the patent would be maintained with the claims according to the auxiliary request. The board did not consider itself prevented by reasons of procedural law from rendering a decision on the basis of Art. 123(3) EPC 1973. It argued that the situation differed from G 4/92 in that the extension to which objection had been made arose solely from a comparison of the wordings of the respective claims according to the granted patent and the main request before the board, and therefore not from facts that had only been introduced into the case during oral proceedings.
In T 133/92 the board concluded that considering and deciding in substance on the maintenance of the patent on the basis of claims as amended during oral proceedings in the absence of the appellants (opponents) did not conflict with the opinion of the Enlarged Board of Appeal in G 4/92. The board stated that the respondent's (patentee's) restrictions to the claims removed objections already raised by the appellants. In such a situation the appellants could not have been taken by surprise, because they had reasonably to expect that the respondent would try to overcome all objections. The submission of auxiliary requests was clearly not a "fact" within the meaning of G 4/92. Were it otherwise, no decision could ever be issued at the end of a hearing where, as is usually the case, auxiliary requests are filed and, as is also frequently the case, the opponent does not attend the hearing, thereby rendering such hearings pointless and a waste of time, as well as offending against the general principle of legal certainty, i.e. the general interest of the public in the termination of legal disputes. Likewise, the board held in T 771/92 that the decision to maintain the patent on the basis of a set of claims amended during oral proceedings in the absence of the appellant did not conflict with the principles described in G 4/92. The submission of restricted claims was neither a fact nor could it be evidence. The appellant could not be taken by surprise by the amendment made, because he had reasonably to expect that the respondent would try to overcome the objections made. The amendments resulted from the novelty objection made by the appellant during the written procedure.
In cases T 912/91, T 202/92, T 856/92, T 890/92, (see also T 673/06 and T 235/08), which were based on similar facts, the board also concluded that Art. 113(1) EPC 1973 had been satisfied. In T 1049/93 the board decided that, where a duly summoned opponent chose not to attend oral proceedings, a board of appeal could still consider prior art which might be an obstacle to the maintenance of the patent in suit. G 4/92 should not be construed as extending or prolonging the rights of a voluntarily absent party. In case T 414/94 the board stated that there was no general prohibition on amending requests during a party's absence from oral proceedings as requested by the respondent/opponent. An absent party must expect reactions of the opposing party within the legal and factual framework of the case established prior to oral proceedings, and the possibility of decisions taking account of, and being based on, such reactions.
In T 501/92 (OJ 1996, 261), the board ruled that if a new ground for allowing the appeal based upon the facts set out in the file record was raised by an appellant for the first time as a new argument during oral proceedings from which the respondent was voluntarily absent, it would be contrary to Art. 113(1) EPC 1973 and contrary to the principles underlying G 4/92 to decide to allow the appeal on the basis of this new ground without first giving the respondent an opportunity to comment. In the case in point the appellant (opponent) submitted at the oral proceedings that the failure by the proprietor to file a formal request for maintenance of the European patent should lead automatically to revocation of the patent.
In T 892/94 (OJ 2000, 1) the respondents (proprietors), albeit duly summoned, not only failed to appear at the oral proceedings but had also notified the board in advance, before the oral proceedings were held, of their decision to take no further part in the proceedings. According to the board, the respondents' declaration that they would take no further part in the proceedings could only be construed as an unequivocal decision to surrender, voluntarily, their rights according to Art. 113(1) EPC 1973 and no longer to avail themselves of the opportunity to present their comments on any objections, facts, grounds or evidence which could potentially be introduced into the proceedings by the appellants or the board and which could later turn out to be decisive for the revocation of the patent. The board was therefore of the opinion that considering and deciding in substance on the revocation of the patent did not contravene the respondents' procedural rights as laid down in Art. 113(1) EPC 1973, although the respondents did not attend the oral proceedings.
In T 191/98 the board dealt with the question of whether the respondent (proprietor), who had not attended the oral proceedings, had been given sufficient opportunity to present comments on the introduction of the late-filed document D10, the interpretation of the disclosure of D10 and the reasons leading to the decision for revocation. The respondent had had more than two years' prior knowledge of the possible admission of D10 into the appeal proceedings and had been informed by the board that D10 was to be discussed at the oral proceedings. The appellant considered D10 to be novelty-destroying. The board did not agree with the appellant's line of argument, but it decided that the subject-matter of claim 1 as granted lacked inventive step when starting from the prior art disclosed in D10, and it revoked the patent.
The board referred to G 4/92 (OJ 1994, 149) and considered that the respondent, when informing it of its non-appearance, should have expected that the board would decide in substance on the patent in its granted form, taking into account any piece of evidence filed by the appellant and arguments based on that evidence, including the possibility that the line of argument based on a particular piece of evidence would be further developed during the oral proceedings.
T 55/91 raised the principle of the right to be heard in ex parte proceedings when the applicants/appellants, who were duly summoned to attend oral proceedings, failed to take advantage of the opportunity presented. The board considered that, pursuant to Art. 113(1) EPC 1973, the appellants had had an opportunity to present their comments on the novelty objection raised by the board, but had not availed themselves of this opportunity. On considering the case at the oral proceedings, duly held pursuant to R. 71(2) EPC 1973 despite the absence of the appellants, the board came to the conclusion that the subject-matter of claims 1 and 2 lacked novelty for reasons already set out by the board.