3.4.2 Right to be heard – right to have submissions taken into consideration

The right to be heard is enshrined in Art. 113 EPC and reads: "The 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." The boards refer to this right in their case law on the duty to provide reasons under R. 111(2) EPC (see also, with regard to Art. 113 EPC, chapter III.B.2.5. "Consideration of the parties' arguments, requests, evidence and other submissions" and, with regard to Art. 112a EPC, chapter V.B.4.3.11 "Consideration of the parties' arguments in the written decision").

The right to be heard under Art. 113(1) EPC is not just a right to present comments but also to have those comments duly considered (see, e.g. R 8/15; J 7/82, OJ 1982, 391; T 508/01; T 763/04; T 1123/04; T 246/08; T 1492/18 and T 431/21). The comments presented must be considered in the ensuing decision (J 7/82, OJ 1982, 391; and T 246/08).

Insufficient reasoning of a decision under R. 111(2) EPC may amount to a violation of the right to be heard under Art. 113(1) EPC (see e.g. T 66/20 and T 1713/20). By providing adequate reasoning, the deciding body can demonstrate that it adhered to the requirements of Art. 113(1) EPC (see e.g. T 66/20 and T 1713/20). Accordingly, the board in T 363/22 held that since at least for the objection relating to lack of novelty of the subject-matter of claim 1 as granted with respect to the disclosure of document D12 the decision was insufficiently reasoned due to no mention of the appellant's arguments, it could not be determined whether such arguments had been duly considered. The board in T 1713/20 found that since the examining division’s decision had not been sufficiently reasoned with regard to inventive step and inventive step had been the sole reason on which the decision to refuse the application had been based, this lack of reasoning amounted to a violation of Art. 113(1) EPC. The board in T 1094/20 found the contested decision to be insufficiently reasoned (R. 111(2) EPC) because important arguments put forward by the patent proprietor had been disregarded, which was an infringement of its right to be heard (Art. 113(1) EPC).

In R 8/15 the Enlarged Board held that Art. 113(1) EPC implies that decisions of the EPO boards of appeal should adequately state the reasons on which they are based in order to show that the parties were heard. A party must be able to examine whether, in its view, the board has afforded it the right to be heard in order to be in a position to decide on whether or not to file a petition under Art. 112a(2) (c) EPC. However, Art. 113(1) EPC must be interpreted more narrowly than R. 102(g) EPC which requires a board to give reasons for its decision, but infringement thereof is not as such a ground for review. In other words: for the purpose of compliance with the right to be heard, reasons may be incomplete, but as long as they allow the conclusion to be drawn that the board, in the course of the appeal proceedings, substantively assessed a certain point arising in the procedure that it found to be relevant, there is no violation of Art. 113(1) EPC. With reference to R 8/15, the Enlarged Board expressed the view in R 10/18 that it was to be presumed that a board took account of a party’s submissions that it did not address in the reasons for its decision, meaning that it, in a first step, took note of them and, in a second step, considered them, i.e. assessed whether they were relevant and, if so, whether they were correct. However, the Enlarged Board admitted that an exception to this presumption may have to be made if there are indications that may result in its rebuttal, e.g. if a board does not address in the reasons for its decision submissions by a party that, on an objective basis, are decisive for the outcome of the case, or dismisses such submissions without assessing them as to their correctness. In analogy to Catchword 2 of R 10/18, the board considered in T 1550/18 that a department of first instance was presumed to have taken into account a party’s submissions that it did not address in the reasons for its decision, meaning that it, first, took note of them and, second, considered them, i.e. assessed whether they were relevant and, if so, whether they were correct. The board added that an exception may apply if there are indications to the contrary, e.g. if a department of first instance does not address in the reasons for its decision submissions by a party that, on an objective basis, are decisive for the outcome of the case. See also chapters III.B.2.5. "Consideration of the parties' arguments, requests, evidence and other submissions" and V.B.4.3.11 "Consideration of the parties' arguments in the written decision".

In T 1123/04 the board observed that the opportunity to present comments and arguments guaranteed by Art. 113(1) EPC is a fundamental principle of the examination, opposition and appeal procedures and cited the finding in T 508/01 that this is not just a right to present comments but also to have those comments duly considered (see also T 2915/19).

In T 246/08 the board found that it had to be clear from the reasons that the core arguments had been addressed in substance in arriving at the decision (see also T 363/22). The decision had to show that all potentially refutative arguments adduced by a party were actually refutable (see also T 337/17, T 1655/21). The board cited T 763/04 and said that merely repeating the parties' submissions was not enough. The board in T 1997/08 ruled that comments received in response to communications had to be taken into consideration too. On the same note, the board in T 1997/21 found that it was not apparent from the contested decision what view the examination division had taken of the arguments the applicant had submitted after the communication under Art. 94(3) EPC had been issued. As a result, neither the applicant nor the board was able to ascertain why the examining division had found the arguments unconvincing. That was not in keeping with the duty to give reasons for decisions and infringed the applicant's right to be heard.

In T 420/86, for example, it was found that the opposition division had based its decision on factors on which the parties had been unable to comment because it had only emerged in the written reasons that a further document had been of central importance to the decision.