T 0408/08 14-11-2008

1. The appeal is admissible.

2. Substantial Procedural Violation

2.1 Article 113(1) EPC (in its 1973 version applicable at the time of oral proceedings and issuance of the written decision) enshrines a party's right to be heard (as explicit in the heading of the same Article in its 2000 version). Thus "decisions ... may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments". Where, for example, a new document is first cited by the examining division in oral proceedings, this basic procedural right will have been observed if the applicant is given an adequate amount of time to study the document and present comments, see e.g. T 0951/97 (OJ EPO 1998, 440) or T 0376/98. This is analogous to the procedure set out in the Guidelines for Examination in the EPO, E-III, 8.6, final paragraph of page III-7, when pertinent new facts or evidence are admitted during opposition oral proceedings.

2.2 The decision, in the section headed "2. Article 56 EPC" of the reasons, on page 3, argues lack of inventive step of the two main differences i) and ii) over D1 in reference to D2 : "it is apparent from paragraph [0016] of EP-A-1 107 074 - cited by the primary examiner during oral proceedings, a copy of which is annexed to the present decision - that a standard method of producing tubular pipes and conduits is by means of cold-drawing through a circular die". D2, and specifically paragraph [0016], is thus cited in the decision as evidence of the fact that drawing tubular pipes (of the frame) is standard.

2.3 The minutes of the oral proceedings, see section 3, fifth and sixth paragraphs, state that D2 was cited in the context of a discussion of a proposed claim combination:

"[the applicant] proposes the combination of claims 1 and 3 including an appropriate drawing die.

The first member of the examining division explains that such an appropriate drawing die is already known from EP-A-1 107 074".

Inspection of the file confirms that this document had not been mentioned previously in the procedure.

The minutes do not record an adjournment of the proceedings or any other opportunity afforded the appellant-applicant to study D2 and present comments. In the telephone consultation of 15 October 2008 with the rapporteur the appellant-applicant confirms that he was neither provided with a copy nor that the proceedings were adjourned (only after the proceedings did he retrieve D2 from the internet to ascertain its contents).

2.4 The fact that at the oral proceedings the appellant-applicant was not given an opportunity to present his comments on D2, which is relied upon as evidence of lack of inventive step in the decision, can but lead the Board to conclude that the appellant-applicant's right to be heard under Article 113(1) EPC was violated.

2.5 A comparison of the minutes and the decision further reveals a change in the facts and evidence relied on by the division in its reasoning regarding inventive step. The minutes, see section 3, first paragraph, indicate that the difference over the closest prior art of D1 of making a frame from drawn steel was considered well-known procedure ("the first member argues that the fact that stainless steel is unpainted and that the frame is made from drawn steel is a well known procedure in the state of the art") without citing any particular further prior art. In contrast, the decision, in the passage mentioned above relies on a specific, hitherto unmentioned paragraph of D2 to demonstrate that it is standard to cold-draw tubular pipes from a circular die. The examining division appears to acknowledge this shift in that it considers it appropriate to now provide a copy to the appellant-applicant by annexing a copy of D2 to the decision, see page 2 of the cover sheet (EPO Form 2007) under "enclosures". The fact that the decision thus now relies on new evidence, in the form of paragraph [0016] of D2, where neither that passage, nor in fact D2, had played a role before, compounds the examining division's violation of the right to be heard. It is in no way mitigated by the belated provision of a copy of D2 with the decision.

2.6 As the decision is fundamentally flawed in its non-observance of a fundamental procedural right the Board is compelled to set it aside without any consideration of the merits of the appeal.

3. Remittal and reimbursement of the appeal fee

3.1 According to Article 11 of the Rules of Procedure of the Boards of Appeal of the EPO (RPBA) in their current version, see OJ EPO 2007, 536, "[a] Board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise". As the violation of a party's basic right to be heard in the Board's view represents a fundamental deficiency, and, moreover, no special reasons to decide otherwise are apparent, the Board decides to remit the case to the department of first instance. Such remittal shall be without prejudice to the merits of the case. Examination should then proceed by affording the appellant-applicant an opportunity to comment on D2.

3.2 By reason of the substantial procedural violation the Board also finds it equitable to reimburse the appeal fee according to the provision of Rule 67 EPC 1973.