2.6. The right to be heard and the timing of decisions
2.6.1 Decision could not be expected
In T 849/03 the board held that a decision should not catch the parties unawares. In the examination procedure the right to be heard is therefore violated not only in the event of failure to inform the applicant beforehand of the reasons forming the basis of a rejection but also if, at the time the decision is issued, the applicant had no reason to expect such a decision (see also T 1022/98 and chapter V.B.4.3.10 "Timing of a decision allegedly surprising").
In T 611/01 the board decided that a substantial procedural violation was occasioned by the examining division holding out to the appellants the prospect of a further opportunity to file arguments before any decision would be issued, and then issuing the decision without providing for that opportunity (regarding a false impression raised concerning amended claims, see also T 309/94).
In T 2054/19 the examining division had raised objections under R. 137(4) and 137(5) EPC in its Art. 94(3) EPC communication and indicated therein that it had been "at present not practicable to carry out a full examination of the application". In response the applicant filed a new set of claims, upon which the examining division based its decision to refuse the application. The board held that when the applicant had sought to remedy deficiencies by filing a new set of claims, they could expect that the examination proceedings would be continued. The board found that the appellant had been taken by surprise by the timing of the decision.
In T 966/02 the board stated that it had been clear that the appellant (patent proprietor) had regarded both filed notices of opposition as inadmissible and had thus felt that there was no sense in commenting on the facts until the situation had been clarified. The appellant could not have foreseen that the opposition division would give a final decision without first clarifying the procedural situation, and it came as a complete surprise to it that it did so.
In T 922/02 (ex parte) the board stated that the provisions of Art. 113(1) EPC were only complied with in a case where the decision was taken after remittal for further prosecution, if the notification and invitation was made after the remittal, typically by announcing the resumption of the proceedings, setting out the objections, if any, and asking the appellant whether or not they wished, within a fixed period of time, to present their comments or modify their request(s). Otherwise any final decision would come as a surprise to the appellant, which was contrary to the principle of good faith and fair hearing established by Art. 113(1) EPC. The board followed in this respect the case law developed in T 892/92 (OJ 1994, 664) and T 120/96 for opposition proceedings, which was equally applicable to examination proceedings, because the right to be heard was an essential procedural principle governing both procedures.
In T 281/03 of 17 May 2006 date: 2006-05-17 the issue of inventive step was not discussed at the oral proceedings, and the opposition division, after deliberating and announcing its decision on novelty, immediately announced the decision to reject the oppositions. The board held that, in order to guarantee the right to be heard, there should have been an explicit step, recorded in the minutes, giving the opponent the opportunity to comment on inventive step before the final deliberation, or alternatively an opportunity after the deliberation to comment on the opposition division's conclusion.
In T 451/06 the board distinguished the situation at hand from that in decision T 281/03 date: 2006-05-17. In the case underlying T 281/03 date: 2006-05-17, the opposition division had failed to give the opponent an opportunity to comment on lack of inventive step, thereby depriving the opponent of any possibility of substantiating a ground of opposition (see G 1/95). By contrast, in the case in hand, the opponent had been given the opportunity to substantiate the ground of opposition of lack of inventive step. The Chair's invitation to present all the objections in respect of inventive step had in effect been an invitation to the opponent to present both its "main and auxiliary requests". After the initial statement of the Chair that the issue to be discussed was lack of inventive step, the substantiation of the ground of opposition was exclusively the responsibility of the opponent.
- T 1588/22
In the proceedings leading to the decision under appeal in T 1588/22, the examining division had issued a communication on 27 July 2021. The last paragraph of the communication had read as follows: "The applicant may choose to amend the claim set as previously proposed by the examining division (see the text intended for grant dated 01.06.2021) and thereby lead to the grant of the present application. They may also choose to submit further arguments along with a new claim set satisfying the requirements of EPC. In the latter case the applicant is kindly reminded that the examination procedure would continue with oral proceedings for the sake of efficiency and better communication." On 6 November 2021 the applicant (appellant) had filed a reply to the communication and a new set of claims. On 24 November 2021, the applicant had filed a new set of claims identical to the set of claims filed on 6 November 2021. Upon an enquiry by the applicant as to when the EPO would deliver the next communication, the examining division had issued on 7 December 2021 a communication and stated that it would issue a communication within two months. On 5 January 2022, the examining division issued a decision refusing the application based on the claims filed on 24 November 2021.
The board recalled that in line with the established case law of the boards, the principle of the protection of legitimate expectations applied in proceedings pursuant to the EPC. Its application to procedures before the EPO implied that measures taken by the EPO should not violate the reasonable expectations of parties to such proceedings (G 2/97). It required that communications addressed to applicants be clear and unambiguous, i.e. drafted in such a way as to rule out misunderstandings on the part of a reasonable addressee (J 3/24).
According to the board the examining division's announcement in its communication of 27 July 2021, that the appellant "may also choose to submit further arguments along with a new claim set satisfying the requirements of EPC. In the latter case the applicant is kindly reminded that the examination procedure would continue with oral proceedings for the sake of efficiency and better communication" appeared nonsensical or at least misleading in the given circumstances. The only way for the appellant to make sense of this statement was to assume that it referred to a situation where a new claim set was filed that would not meet the requirements of the EPC, in which case the proceedings would be continued with the holding of oral proceedings. This created the legitimate expectation on the appellant's part that, after having filed a new set of claims on 6 November 2021 (refiled on 24 November 2021), these would either be found allowable or oral proceedings would be held and that, in the latter case, the appellant would have the opportunity to provide, during the oral proceedings, submissions on the allowability of this set of claims. The appellant could not have expected as the next action of the examining division that a decision refusing the patent application would be issued. According to the board, this was exacerbated by the communication of 7 December 2021 informing that the examining division would "supply a communication within 2 months".
The board inferred from these events that instant issuance of the decision refusing the application had been a surprise for the appellant. Thus, the principle of the protection of legitimate expectations had not been observed in the case at hand.
The board concluded that in view of the legitimate expectations created by the examining division, the appellant had had to assume that she would be given a further opportunity to provide counterarguments or submit amendments prior to any decision to refuse her application. The board held that the issuance of the decision refusing the patent application without holding oral proceedings or issuing a further communication as announced had thus had the effect of depriving the appellant of any such further possibility to provide comments. Consequently, the appellant's right to be heard had been violated (Art. 113(1) EPC). The examining division's decision to refuse the application thus constituted a substantial procedural violation.
The board decided to set aside the appealed decision and to remit the case to the examining division for further prosecution. Furthermore, it considered reimbursement of the appeal fee under R. 103(1)(a) EPC equitable.