3.2. Cases where the EPO is uncertain or mistaken about the approval of the text

In T 382/10 the board held that, to avoid any misunderstanding, in particular when requests were amended during oral proceedings, the examining division should clarify the final requests before pronouncing its decision at the conclusion of oral proceedings. See also the finding of the Enlarged Board of Appeal that in cases in which a request of a party is considered unclear, it is the duty of the deciding body to ask for clarification before deliberation (see R 14/10). In accordance with prevailing case law (T 666/90, T 552/97 and T 1439/05, see below), the fact that the final requests were not established contravened the provisions of Art. 113(2) EPC and was considered a substantial procedural violation.

In T 666/90 the status of the requests on file was not clarified during oral proceedings before the opposition division. This resulted in a disagreement in the period between oral proceedings and the drafting of the written decision. In a case such as this the appropriate action to take was to request a written copy of the final version of the requests and clarification of the order in which they were to be ranked prior to the decision being issued. In T 552/97 the opposition division had taken no decision on the main request, being under the incorrect impression that it was no longer in the proceedings. The board pointed out that EPO departments should clarify the position before issuing decisions, especially if requests had been amended in oral proceedings. In T 355/03 it was unclear which text the applicant wished to have as the basis for grant. The board held that the examining division ought to have established what the applicant really wanted.

In T 1439/05, it was held that if there were several requests in the form of a main request and successive auxiliary requests submitted in order of relevance, the examining division was bound in its decision by the order in which the requests had been submitted.

In T 425/97, the text of the single claim attached to the written decision of the opposition division was different from the text apparently held patentable at the oral proceedings. From the original minutes of the oral proceedings, the history of the case and further circumstances, the board concluded that the opposition division, in violation of Art. 113(2) EPC, took a decision on the patent in suit on the basis of a text which had neither been submitted nor agreed by the proprietor of the patent.

In T 543/92 and T 89/94 the opposition division unintentionally failed to take account of a document introducing amended claims. In both cases the patent was revoked. The board ruled that once an item of mail had been received at the EPO it had to be considered to have been received by the organ deciding the case. Responsibility for correct processing of mail thereafter lay with the relevant departments within the EPO. The decision under appeal was thus in breach of Art. 113(2) EPC 1973.

In T 1351/06, the main request had not been withdrawn and had therefore remained pending. As a result, the decision to grant the patent on the basis of the text approved by the applicant as an auxiliary request was contrary to Art. 113(2) EPC 1973.

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