T 0872/90 27-06-1991

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is, therefore, admissible.

2. Considering the procedural matters referred to by the Appellant, the question arises whether the Examining Division correctly applied Rule 86(3) EPC and also whether the Appellant's request for "an opportunity to be heard" constitutes a valid request for oral proceedings in accordance with Article 116 EPC.

2.1. As regards the refusal of the Examining Division to consider the last filed claims and its subsequent taking of the claims filed with letter of 17 July 1989 as a basis for its decision, it has been set out in a former decision by this Board (see T 183/89 of 30 July 1989) that in view of the requirement of Article 113(2) EPC according to which the European Patent Office shall consider and decide upon the European application only in the text submitted to it, or agreed, by the Appellant, former claims which have been replaced by newly filed claims cannot any longer be considered to constitute a text agreed to by the Applicant.

The present decision under appeal refusing the application on the ground of Article 56 EPC in that the subject-matter of Claim 1 filed with letter of 17 July 1989, which had been replaced by Claim 1 filed with letter of 1 March 1990, lacked an inventive step, is therefore void in respect of this ground, since this claim did not at that time represent a valid claim of the application.

It is further observed that the Examining Division's decision with respect to its not allowing the claims filed with letter of 1 March 1990 is not reasoned and is, therefore, contrary to the requirement of Rule 68(2) EPC.

In this respect, neither the remark in point 1 of the Statement of Reasons "that the applicant has already once amended the claim" nor the reference to Rule 86(3) in the communication dated 7 September 1989 can be considered to represent a reasoning because, in the Board's opinion, such statements solely constitute a reference to the power given to the Examining Division by the above Rule.

In view of these conclusions the Board is of the opinion that the Examining Division has not correctly applied Rule 86(3) EPC.

2.2. Considering the claims filed with letter of 1 March 1990, the Board is satisfied that these new claims and in particular Claim 1 were filed in an attempt to overcome the objections made in the communication dated 7 September 1989 and that thus there is no reason to refuse these claims under Rule 86(3) EPC.

As will be clear from a comparison of Claim 1 filed with letter of 17 July 1989 and Claim 1 filed with letter of 1 March 1990 the latter claim comprises in addition to all the features of the former Claim 1 further features relating to the manufacturing steps of the claimed product (plug). However, since this claim was rejected by the Examining Division under Rule 86(3) EPC its subject-matter has neither been examined for inventive step nor for the other requirements of the EPC such as the requirements of Article 123(2) and Article 84 EPC. In view of this fact and of the Appellant's request for referral back to the Examining Division, the Board does not consider it to be appropriate in the present case to decide on these points as a first instance but makes use of its power under Article 111(1) EPC to remit the case for further prosecution.

2.3. As regards the question whether the request for "an opportunity to be heard" in the letter of 1 March 1990 constitutes a valid request for oral proceedings in accordance with Article 116 EPC, the Board observes that the Examining Division's decision as the sole reason for refusing this request in point 5 thereof merely contains the statement that the Examining Division "does not regard such a request as a request for oral proceedings in accordance with Article 116 EPC".

In accordance with established jurisprudence based on former Decisions of the Boards of Appeal (see T 19/87 OJ EPO 1988, 268 and T 668/89 of 19 June 1990), if any reasonable doubt exists in the minds of the Examining Division as to the true nature of a potentially ambiguous request made to it by the Applicant it is clearly desirable, as a matter of practice, that the Examining Division should seek clarification from the party concerned, in particular because the right to an oral hearing provided by Article 116 EPC is an extremely important procedural right which the EPO should take all reasonable steps to safeguard. Violation of this right must, therefore, in principle, be considered as a substantial procedural violation within the meaning of Rule 67 EPC unless the circumstances and reasons for the refusal to grant that right can be considered as a mere error of judgement. Having regard to the somewhat ambiguous nature of the request for an opportunity "to be heard", which in the first place gives rise to the interpretation to represent a request for an informal interview, the allowance or refusal of which is entirely a matter of discretion, the Board finds that such an error of judgement has in fact occurred and there was no procedural violation in this respect.

2.4. However, since the issuing of a final decision by the Examining Division on the basis of no longer valid documents was a clear violation of Article 113(2) EPC, the decision under appeal has to be set aside and, to this extent, the appeal is allowable for the purpose of deciding the Appellant's request for reimbursement of the appeal fee under Rule 67 EPC. This reimbursement is considered equitable as the committal of the procedural violation was cause for the necessity to lodge an appeal at this stage.