2.5. Consideration of the parties' arguments, requests, evidence and other submissions
2.5.1 General principles
The right to be heard under Art. 113(1) EPC requires that those involved be given an opportunity not only to present comments (on the facts and considerations pertinent to the decision) but also to have those comments considered, that is, reviewed with respect to their relevance for the decision on the matter (see, with regard to Art. 112a EPC, chapter V.B.4.3.11 "Consideration of the parties' arguments in the written decision" and, with regard to R. 111(2) EPC, chapter III.K.3.4. "Reasons for the decision"). However, it is not necessary to consider each and every argument of the parties in detail in a decision. The boards may also refute arguments implicitly, and may disregard irrelevant arguments (R 5/15). Furthermore, according to the Enlarged Board in R 10/18, a board is presumed to have taken into account a party's submissions that it did not address in the reasons for its decision. An exception may apply if there were indications to the contrary, e.g. if a board did not address in the reasons for its decision submissions by a party that, on an objective basis, were decisive for the outcome of the case, or it dismissed such submissions without first assessing them as to their correctness. See also T 1550/18 in which the board applied these principles by analogy to a department of first instance, as well as chapter III.K.3.4.2 "Right to be heard – right to have submissions taken into consideration".
In R 6/20 date: 2023-07-10 the Enlarged Board clarified that the requirement that "the Board substantively considered those submissions" (point 1, second paragraph, of the Catchword in R 10/18) should be given the meaning that "the Board considered the contents of those submissions", with this consideration comprising matters pertaining to admittance of facts, evidence and requests, and/or relating to substantive law, i.e. the merits of a case. See also chapters III.K.3.4.2 "Right to be heard – right to have submissions taken into consideration" and V.B.4.3.11 "Consideration of the parties' arguments in the written decision".
- T 0842/24
In T 842/24 the opponent submitted that the plasticizer insufficiency objection ("the Objection") had not been taken into account by the opposition division. In the opponent's view, this constituted a violation of its right to be heard justifying a remittal to the opposition division and the reimbursement of the appeal fee. The patent proprietor, however, argued that no procedural violation had occurred in this respect, since the Objection had not been actively maintained in the oral proceedings.
The board indicated that the Objection had been raised by letter of 13 July 2023 and addressed again by letter of 16 February 2024. Although the Objection had not been specifically addressed in the opponent's subsequent letter of 28 March 2024, that letter stated at the end that all the arguments put forward in the written submissions of 16 February 2024 were highly relevant and therefore had to be taken into account by the opposition division. The board acknowledged that the minutes of the oral proceedings did not indicate that the Objection had been discussed. In the board's view, however, not addressing during the oral proceedings an objection submitted in writing did not necessarily imply that the objection had been withdrawn. This was because written submissions formed the basis of EPO proceedings and were complemented, where necessary, by an opportunity for a party to present and argue its case orally (G 4/95, G 1/21). Parties had the opportunity to repeat or expand upon some of the written submissions they considered necessary for defending their case, but were under no obligation to address all written submissions orally..
The patent proprietor was of the opinion that decision R 17/11 was relevant. The board held that, in that case, the Enlarged Board had not concluded that the absence of a petitioner's argument about the status as prior art of a document during the oral proceedings necessarily implied that this point was no longer maintained by the petitioner, but only that the technical board may have gathered from the discussion on that document that this point was no longer maintained..
The board found that whether an objection had been withdrawn or abandoned depended on the particular context underlying the contested decision. Decision T 526/21, cited by the patent proprietor, concerned a situation where the discussion during the oral proceedings about the choice of the closest prior art had not concerned two further documents on the basis of which additional inventive step attacks had been submitted in writing. In that situation, it had been considered that those attacks had not been maintained, as those two further documents had no longer been argued to represent a possible starting point for the assessment of inventive step.
According to the board, however, nothing in the debate during the oral proceedings in the present case implied that the opponent had not maintained the Objection. On that basis, the opposition division's failure to give due consideration to the Objection which, according to the opponent's submissions was an essential aspect of the alleged insufficiency of disclosure of the subject-matter of claim 1, constituted a substantial violation of the opponent's right to be heard in contravention of Art. 113(1) EPC.