3.3.
Cases where the EPO is uncertain or mistaken about the approval of the text 

In T 382/10 the board held that, to avoid any misunderstanding, in particular when requests were amended during oral proceedings, the examining division should clarify the final requests before pronouncing its decision at the conclusion of oral proceedings (see also Chapter IV.F.3.14.2 "Rule 104(b) EPC - failure to decide on a party's request"). In accordance with prevailing case law (T 666/90, T 552/97 and T 1439/05, see below), the fact that the final requests were not established contravened Art. 113(2) EPC and was considered a substantial procedural violation.

In T 666/90 the status of the requests was not clarified during oral proceedings before the opposition division. This resulted in a disagreement between the patentee and the opposition division in the period between oral proceedings and the drafting of the decision. According to the board, the appropriate action would have been to request, prior to the decision being issued, a written copy of the final version of the requests and a clarification of their order. In T 552/97 the opposition division had taken no decision on the main request, incorrectly assuming that it was no longer in the proceedings. The board pointed out that EPO departments should clarify the position before issuing decisions, especially if requests had been amended in oral proceedings. In T 355/03 it was unclear which text the applicant wished to have as the basis for grant. The board held that the examining division should have established what the applicant really wanted.

In T 1439/05 it was held that if there were several requests in the form of a main request and successive auxiliary requests submitted in order of relevance, the examining division was bound in its decision by the order in which the requests had been submitted.

In T 425/97, the text of the single claim attached to the written decision of the opposition division was different from the text apparently held patentable at the oral proceedings. From the original minutes of the oral proceedings, the history of the case and further circumstances, the board concluded that the opposition division, in violation of Art. 113(2) EPC 1973, had taken a decision on the patent on the basis of a text which had neither been submitted nor agreed by the proprietor of the patent.

In T 543/92 and T 89/94 the opposition division unintentionally failed to take account of a document introducing amended claims. In both cases the patent was revoked. The board ruled that once an item of mail had been received at the EPO it had to be considered to have been received by the organ deciding the case. Responsibility for the correct processing of mail thereafter lay with the relevant departments within the EPO. The decision under appeal was thus in breach of Art. 113(2) EPC 1973.

In T 1351/06, the main request had not been withdrawn and had therefore remained pending. As a result, the decision to grant the patent on the basis of the text approved by the applicant as an auxiliary request was contrary to Art. 113(2) EPC 1973.

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