T 1987/23 (Right to be heard and incomplete reasoning/HUAWEI) 18-03-2025

1. Substantial procedural violations

1.1 The board holds that the examining division committed two substantial procedural violations. The first one occurred by introducing and relying on three new prior-art documents, namely D12 to D14, into the examination proceedings for the first time with the examining division's written decision (cf. Article 113(1) EPC). The second one is due to the fact that the written decision is not reasoned within the meaning of Rule 111(2), first sentence, EPC. The reasons are as follows.

1.2 The procedural principle of the "right to be heard" is enshrined in Article 113(1) EPC, which stipulates that

"[t]he decisions of the European Patent Office may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments".

This implies that a party may not be taken by surprise by the reasons of a written decision, referring to unknown grounds or evidence (see e.g. R 3/13, Reasons 2.2; R 2/14, Reasons 6). In this context, it is generally accepted that the term "grounds or evidence" is to be understood as meaning the essential legal and factual reasoning on which the decision under appeal is based.

1.3 Moreover, according to Rule 111(2), first sentence, EPC, decisions of the EPO which are open to appeal must be reasoned. This means that the decision must address the facts, evidence and arguments which were relevant for reaching the respective decision, and must contain a logical chain of reasoning which led to the relevant conclusions (see e.g. T 292/90, Reasons 2).

1.4 In the present case, the appellant was summoned to oral proceedings before the examining division. Thereafter, it submitted amended claims together with an amended description and withdrew its request for oral proceedings. The examining division then cancelled the arranged hearing. The decision under appeal was subsequently issued as a next official action. In that decision, new evidence, i.e. prior-art documents D12 to D14, were cited for the very first time (see the last paragraph of point 9 of the decision), which were attached to the decision in full (encompassing 404 pages in total) and relied on in the examining division's inventive-step analysis (see appealed decision, point 10.1.8). In addition, the arguments relating to the "discontinuous" aspect defined in feature (e) of claim 1 (see point 10.2) were not presented in any previous official communication of the examining division.

1.5 As to the requirement of Article 113(1) EPC, it is apparent to the board that the appellant (then applicant) did not had any opportunity to present comments on this inventive-step analysis and on the teaching of the new evidence D12 to D14. As a consequence, viewed objectively, the appellant was indeed taken by surprise by the reasons of the appealed decision for essentially two reasons:

- First, the newly cited documents D12 to D14 were referred to for the first time in the written decision (see point 10.1.8) with regard to the "multi-threading mode" recited in feature (e) of claim 1, while the same feature was objected to in the examining division's communication attached to the summons to the first-instance oral proceedings ("the communication") on the basis of document D11 (cf. points 4.1.2 to 4.1.9 of the communication).

- Secondly, the "discontinuous" aspect defined in feature (e) was likewise objected to in the communication on the basis of document D11 (see points 4.1.2 to 4.1.9 of the communication) while the impugned decision, with regard to the same "discontinuous" aspect, sets out completely new arguments.

1.6 As to the requirement of Rule 111(2), first sentence, EPC, the board notes that, according to the impugned decision, the distinguishing features were found to be features (e) to (h) (see point 10.1.2). However, the grounds for the decision do not include any specific reasoning regarding distinguishing features (f), (g) and (h). Hence, a substantive and decisive part of the inventive-step reasoning, which should certainly have addressed all claimed features, is in fact missing.

1.7 Moreover, the above-detailed procedural violations are of a substantive nature because they relate to the substance of the objection under Article 56 EPC, which was the only ground for refusing the present application. Hence, the examination proceedings suffers from two substantive procedural violations within the meaning of Rule 103(1)(a) EPC.

1.8 For the sake of completeness, the board would also like to add that a section in a written decision titled "Obiter dicta" is generally not to be used for introducing an entirely new line of arguments based on further new prior-art documents (i.e. "Doc 1" to "Doc 6").

2. Remittal for further prosecution

2.1 The above-detailed substantive procedural violations also amount to a "fundamental deficiency" apparent in the first-instance proceedings within the meaning of Article 11, second sentence, RPBA which, as a rule, constitutes "special reasons" for remitting a case for further prosecution.

2.2 For these reasons, the board has decided to set aside the appealed decision and to remit the case to the examining division for further prosecution (Article 111(1) EPC).

3. Reimbursement of the appeal fee

3.1 According to Rule 103(1)(a) EPC, the appeal fee shall be reimbursed in full where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation.

3.2 Since the decision under appeal has to be set aside (cf. point 2.2 above) and, thereby, the board effectively follows the relief sought by the appellant, albeit only in part, the appeal is considered to be allowable.

3.3 In the present case, there is also a causal link between the substantial procedural violations and the necessity of filing an appeal against the examining division's decision. Thus, the reimbursement of the appeal fee in full is also equitable within the meaning of Rule 103(1)(a) EPC.

3.4 Hence, even if the appellant has not requested reimbursement of the appeal fee, such reimbursement is ordered on the board's own motion (cf. J 7/82, Reasons 6).

4. Decision in written proceedings

4.1 The appellant requested oral proceedings before the board in the event that the board considers not to grant a patent based on the sole request on file (cf. point II above).

4.2 The board's decision to set aside the decision under appeal and to remit the case to the examining division for further prosecution (cf. point 2 above) is not adverse in substance to the appellant. A hearing before the board for the sole purpose to discuss whether or not to remit the case to the first-instance department is not considered necessary or appropriate (see e.g. T 1051/20, Reasons 4.2, and the decisions cited there).

4.3 Therefore, the decision may be handed down in written proceedings without holding oral proceedings (Article 12(8) RPBA).