Abstract on EPC2000 Art 113(1) for the decision T2054/19 of 02.05.2023

In T 2054/19 the board recalled that the right to be heard under Art. 113(1) EPC also included the right not to be surprised by a decision which had been taken against the expectation that the proceedings would be continued. In the case in hand, the applicant had filed a first amended set of claims as a reaction to the European search report and the search opinion. Based on these claims the examining division issued its only substantive communication under Art. 94(3) EPC. In response the applicant filed a new set of claims. The examining division decided to refuse the application based on these claims. It relied on the views expressed in the European search opinion, as it considered claim 1 of the new set of claims to be identical in scope to claim 1 as originally filed and objected to in the European search report. The board held that the immediate refusal of the application following the communication under Art. 94(3) EPC amounted to a violation of the right to be heard for the reasons set out below. The communication under Art. 94(3) EPC had concerned an entirely different set of claims compared to the one underlying the decision, and in it the examining division indicated that it was "at present not practicable to carry out a full examination of the application". The board held that when the applicant had sought to remedy these deficiencies by filing a new set of claims, they could expect that the examination proceedings would be continued. The applicant had neither been made aware that the examining division had considered the scope of claim 1 before it to be identical to the scope of claim 1 as originally filed, nor of the fact that it had relied on the search opinion. The sentence "Should the applicant however insist on obtaining a patent on one of the claims which were found not to be patentable, a refusal under Art. 97(2) EPC is to be expected." stood at the end of a communication concerning a different set of claims and could thus not be read as an unambiguous reference to the search opinion which had been issued two years earlier. The board stated that where an examining division relies on arguments made in a search opinion, it has to do so in a manner which is clear and unambiguous. There should be no doubt to an ordinary reader about what is meant. Moreover, the appellant had argued in its submission in response to the search opinion that D1 had only disclosed the appearance of gas bubbles in blood during decompression, but had failed to disclose a quantitative estimation ability. This argument, whilst made in the context of a different set of claims, had also been relevant to the claims as originally filed and to the claims underlying the decision. The decision failed, however, to address this argument. Hence, the argument was neither explicitly not implicitly addressed. The board concluded that for all these reasons the appellant had been taken by surprise by the timing and the content of the decision. The board considered these shortcomings to amount to a substantial procedural violation justifying remittal to the examining division for further prosecution and reimbursement of the appeal fee pursuant to R. 103(1)(a) EPC.