2.4. Surprising grounds or evidence
2.4.2 The meaning of "grounds or evidence"
"Grounds or evidence" under Art. 113(1) EPC are to be understood as meaning the essential legal and factual reasoning on which the decision is based (R 16/13, R 5/22, T 532/91, T 105/93, T 187/95, T 1154/04, T 305/14). In T 951/92 (OJ 1996, 53) the board ruled that the term "grounds or evidence" should not be narrowly interpreted and was to be understood as referring to the legal and factual reasons leading to refusal of the application, and not in the narrow sense of a requirement of the EPC (see also T 1423/15 and T 2276/22).
In T 556/15, the examining division's impugned decision was based entirely on a lack of compliance with Art. 123(2) EPC. The board compared the objections under Art. 123(2) EPC raised by the examining division in its two communications with those forming the grounds for its decision. The appellant had never had a chance to comment on those grounds. In the board's view, the term "grounds or evidence" in Art. 113(1) EPC was not to be interpreted narrowly but rather within the meaning of T 951/92 (see also T 233/18). However, this case differed from T 951/92; in T 556/15 the examining division's communications contained objections under Art. 123(2) EPC that, while detailed, did not concern any of the matters on which the decision was ultimately based. The appellant had thus been unaware of which features of the claims under discussion had violated Art. 123(2) EPC until it received the decision, despite the appellant having had several opportunities to amend the claims before the decision.
In T 375/00 the appellant (opponent) considered that the technical problem mentioned by the opposition division in its decision was different from that discussed in the preceding proceedings. The board held that the appellant's right to be heard had not been violated, because the definition of the objective problem was part of the arguments, not part of the grounds as specified in Art. 113(1) EPC.
In T 33/93 the board stated that the citation of a board of appeal decision for the first time in the decision under appeal was not a fresh ground or piece of evidence within the meaning of Art. 113(1) EPC, but a mere repetition of arguments, since it only confirmed the position duly brought to the appellant's attention.
In T 1634/10 the examining division had issued a reasoned communication setting out its objections in the light of two prior art documents. The board held that the mere fact that the examining division had not agreed with the submission of the appellant did not amount to a breach of the right to be heard.
In T 2238/11 the appellant argued that the examining division had surprisingly concluded in the "Further Remarks" section in the decision under appeal that the claimed subject-matter lacked novelty and objected that it had not been heard on that aspect. However, the decision under appeal had been based on lack of inventive step, not on lack of novelty. The board held that a party's right to be heard was not violated if the party did not have the opportunity to comment on observations in an obiter dictum (T 725/05 and T 726/10). The "Further Remarks" section in the decision under appeal did not form part of the actual decision. See also R 5/22. The board in T 1019/22 held that the requirements of Art. 113(1) EPC were, however, contravened if the decision was subsequently based on an "omitted" ground contained in an obiter dictum. In the case in hand, the obiter dictum provided for an assessment of inventive step on the basis of D11. It was apparent to the board that the use of an obiter dictum had not been appropriate, at least owing to the fact that it had contained a part of the finding on which the decision was based. The board concluded that it was not possible to establish that D11 as the closest prior art had not been in the opposition proceedings. The discussion in the opposition proceedings of document D11 as the closest prior art, however, did not appear to have been complete and the board could not ascertain that both parties had been heard on the substance of this issue.
- R 0011/23
In R 11/23 the petition was based on Art. 112a(2)(c) EPC, i.e. the fundamental violation of Art. 113(1) EPC. It was alleged that the clarity objection against auxiliary request 8, which had led to the board's finding that said request had been unallowable, had never been discussed, neither in the written nor in the oral proceedings, but had been brought forward only in the board's written decision..
Specifically, the petitioner argued that there had been two distinct clarity objections against claim 1 of auxiliary request 8: the alleged lack of clarity regarding what "maintaining currents in an allowable range" meant (the "allowable current range objection") and the alleged lack of information on which components were to be protected by the protective circuit (the "unspecified components objection"). The petitioner acknowledged that it had been heard in the context of the "allowable current range objection" but it asserted that it had been confronted with the "unspecified components objection" only when reading the written decision.
The Enlarged Board held that it did not see any clear indication that the "unspecified components objection" had been raised implicitly, for example as an aspect of an overarching clarity objection..
The Enlarged Board agreed with the petitioner in that it was not sufficient for a relevant specific aspect such as the "unspecified components" to be covered or encompassed by a broader clarity objection that had been discussed if the parties had not been aware of the specific aspect during the discussion. In this context, opponent 2 had referred to paragraph [0018] of the patent which had been mentioned in point 7.4 of the decision under review. The Enlarged Board could not see that such a reference implied that the "unspecified components objection" had been discussed. Furthermore, it did not regard the wording of point 7.5 of said decision as evidence that the "unspecified components objection" had been discussed, because it was not clear whether the phrase "as the appellants and the infringer [sic] correctly argue" was linked to the "unspecified components objection".
According to the Enlarged Board, since it had no power or ability to investigate further whether other facts or indications might suggest that the petitioner could be aware that the board had had doubts about the specific aspect of clarity (namely, the "unspecified component" issue), it had to rely on the parties' submissions in this respect. In the absence of any such indication, it was not for the party alleging a breach of its right to be heard to prove that there had been no such facts or indications (see R 15/11). Any doubts remaining on whether a decision under review was based upon facts and considerations on which the parties had had an opportunity to comment must be solved to the affected party's benefit (see R 2/14).
For these reasons, the Enlarged Board concluded that the "unspecified components objection" had not been discussed during appeal proceedings and its use in the written decision had therefore come as a surprise to the petitioner.
As in the appeal case underlying R 2/14, a broader objection had been discussed during appeal proceedings in the present case but not the specific aspect encompassed by the broader objection that turned out to be decisive for the case. In such cases, the "grounds" as referred to in Art. 113(1) EPC may have a more specific meaning than a broader objection like "lack of clarity" or "insufficiency of disclosure". In the present case, it was irrelevant that the broader clarity objection had been discussed. The critical aspect, namely the question of which components needed to be protected, had not been discussed during the appeal proceedings and the board's conclusion on this aspect had come as a surprise to the petitioner.
The "unspecified components objection" which had not been discussed during the appeal proceedings eventually was the reason for the board's finding that the patent was invalid. The Enlarged Board concluded that a fundamental violation of Art. 113(1) EPC had occurred. The decision under review was thus set aside and the proceedings before a board reopened..
On the latter, the Enlarged Board, referring to Art. 112a(5) and R. 108(3) EPC, explained that the board responsible for the reopened proceedings was not automatically the board which had issued the decision underlying the review proceedings. Rather, the allocation of the reopened proceedings had to be determined in accordance with the business distribution scheme as applicable when the proceedings were reopened.