T 2024/21 30-10-2023

1. Procedural violation

1.1 According to established case law the right to an oral hearing is an extremely important procedural right which the EPO should take all reasonable steps to safeguard (T 668/89, T 808/94, T 556/95, T 996/09, T 740/15). If a request for oral proceedings has been made, such proceedings have to be appointed. This provision is mandatory and leaves no room for discretion (T 283/88, T 795/91, T 556/95, T 1048/00, T 740/15), i.e. parties have an absolute right to oral proceedings. Considerations such as the speedy conduct of the proceedings, equity or procedural economy cannot take precedence over this right (cf. Case Law of the Boards of Appeal, 10th edition, III.C.2.1).

It should be noted in passing that a discussion of the recent decision J 6/22 does not appear necessary in the context of the present case, as this decision endorses, according to the understanding of the present Board, a restrictive interpretation of the right to oral proceedings for very specific procedural circumstances. However, a dynamic interpretation restricting explicitly regulated procedural rights of the parties does not seem to be considered in J 6/22 for the central area of the European grant procedure.

1.2 The reasoning contained in the contested decision (by reference to the communication of 25 January 2021, see point IX. above) is thus based on a manifestly incorrect understanding of the right to oral proceedings as enshrined in the EPC. The fact that oral proceedings cause costs is anyway no reason not to comply with the appellant's repeatedly expressed wish to hold oral proceedings. The reminder in the contested decision of the applicant's duty to submit an EPC-compliant version of the application documents is also no reason not to comply with a request for oral proceedings. Nor is the repeated indication in the examining division's communications that amendments would not be admitted to the proceedings or had not been admitted under Article 137(3) EPC, so that no version of the application documents approved by the applicant would exist in the proceedings, a sound reason for not holding oral proceedings. Even if the examining division considered the possibility of not admitting amended application documents into the proceedings, oral proceedings would still have had to be held in the present case in order to discuss (at least) the question of (non-)admittance of the amendments with the applicant, which would have also comprised the issue of whether the objections raised by the examining division had been overcome by the amendments (see below point 1.4).

1.3 In the present case the appellant requested oral proceedings for the first time in its reply to the European Search Opinion. This request was later on repeated in particular for the discussion of the objections under Articles 84 and 123(2) EPC. In order to overcome the objections under Articles 84 and 123(2) EPC the appellant amended its application documents and argued against the outstanding objections. In particular the appellant asked for further explanation with respect to these objections and for oral proceedings in order to get the opportunity to discuss those issues with the examining division (cf. letter of 27 September 2019, page 3: "We continue to respectfully disagree with these objections, and request that the Examining Division issue a summons to oral proceedings to discuss these points."). However, instead of summoning to oral proceedings, the examining division elaborated on the objections under Article 84 and 123(2) EPC and noted at the end of its communication as follows: "The Applicant, however, did not provide any arguments as to the still existing Article 123(2) and 84 EPC objections. As already announced and for the above reasons, the Examining Division does not give its consent under Rule 137(3) EPC to the newly filed set of claims (Guidelines H-11, 2.3.1.2 and 2.3.1.3). The legal effect of this is that there is no agreed text, which would result in a refusal under Article 113(2) EPC."

1.4 The examining division's approach of informing the applicant at that stage of the proceedings that it denied approval of the amended documents of the patent application under Rule 137(3) EPC and that there was therefore no valid text to which the applicant had given his consent under Article 113(2) EPC constituted a substantial procedural violation. In that respect, it must be taken into account that the appellant's request for oral proceedings also covered the issue of (non-)admittance of amended application documents under Rule 137(3) EPC. A decision under Rule 137(3) EPC is a discretionary decision which requires balancing the applicant's interest in obtaining a patent and the EPO's interest in bringing the examination procedure to a close. Furthermore, the exercise of discretion under Rule 137(3) EPC needs to be reasoned (cf. on that topic: Case Law of the Boards of Appeal, 10th edition, IV.B. 2.4.1). Due to its valid request for oral proceedings the appellant had the right to be heard in oral proceedings at least on the topic of admittance of the amended application documents under Rule 137(3) EPC. Since the examining division based its non-admittance of the amended application documents on the failure to overcome objections raised under Articles 84 and 123(2) EPC, the appellant would thus also have had to be heard at the oral proceedings on the question of whether these objections had been overcome. It is therefore clear that the question of admittance of the amended application documents would have required not only a discussion in terms of formal law but, in particular, a discussion in terms of substantive content. In that regard, it must also be taken into account that the appellant had on several occasions commented on those objections. Thus, the appellant would have had to be heard on these substantive issues in oral proceedings, namely those for which it explicitly requested oral proceedings.

1.5 It is evident from the further course of the proceedings that this procedural deficiency adversely affected the entire further proceedings. With regard to the fact that the applicant ultimately withdrew its request for oral proceedings, it can only be concluded that the examining division's continual refusal to appoint oral proceedings and indeed its explanation for not doing so (see point IX above), made it evident that the appellant was left with no realistic possibility to have its request for oral proceedings met. Thus, maintenance of the request for oral proceedings had clearly been rendered futile. The Board thus considers that withdrawal of the request for oral proceedings under these particular circumstances did not therefore absolve the examining division from its duty to hold the originally requested oral proceedings. In this context, it must also be taken into account that the examination procedure had already lasted several years and it is immediately recognisable that the appellant was given no other way out in order to obtain an appealable decision. And, without precluding that the objections might still be maintained, such an appealable decision may have been avoided had oral proceedings been held, giving the applicant the chance to submit its arguments as to why its application should be found allowable and to discuss the various objections with the examining division.

1.6 In view of the overall course of the examination proceedings it is to be noted that although the appellant ultimately withdrew its request for oral proceedings and requested a decision on the state of the file, it was deprived of its right to be heard in oral proceedings as enshrined in Articles 113(1) and 116(1) EPC. Due to this substantial procedural violation, the contested decision had to be set aside. Furthermore, the appeal fee is to be to reimbursed under Rule 103(1)(a) EPC and the case is remitted to the examining division under Article 11 RPBA (Rules of Procedure of the Boards of Appeal) for further prosecution.

1.7 As regards the issue of remittal, the Board would like to emphasise that in view of the aforementioned fundamental procedural deficiency, the Board should in principle not perform the duty of the examining division by essentially dealing with the case itself for the first time in oral proceedings. Lastly, it cannot be assumed, merely because the examining division issued communications with previous objections maintained, that such objections would be maintained after oral proceedings are held and the oral arguments of the applicant in this respect taken into account, nor (in regard to the appellant's misgivings in this regard) that the examining division would be "overly harsh" in this respect.