A. Principe de protection de la confiance légitime

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.