2.3.2 The meaning of "grounds or evidence"

"Grounds or evidence" under Art. 113(1) EPC are to be understood as meaning the essential legal and factual reasoning on which the decision is based (T 532/91, T 105/93, T 187/95, T 1154/04, T 305/14). In T 951/92 (OJ 1996, 53) the board ruled that the term "grounds or evidence" should not be narrowly interpreted and was to be understood as referring to the legal and factual reasons leading to refusal of the application, and not in the narrow sense of a requirement of the EPC (see also T 1423/15).

In T 556/15, the examining division's impugned decision was based entirely on a lack of compliance with Art. 123(2) EPC. The board's comparison of the objections under Art. 123(2) EPC raised by the examining division in its two communications with those forming the grounds for its decision revealed that the latter had come as a surprise to the appellant. It had never had a chance to comment on those grounds, having only become aware of the new objections under Art. 123(2) EPC upon receiving the decision. In the board's view, the term "grounds or evidence" in Art. 113(1) EPC should not be interpreted narrowly but rather within the meaning of T 951/92. However, this case differed from that dealt with in T 951/92 in so far as the communications sent by the examining division to the appellant contained objections that, while detailed, did not concern any of the matters on which the decision was ultimately based. The appellant had thus been unaware that the features of the claims under discussion had violated Art. 123(2) EPC until it received the decision. The fact that the appellant had had several opportunities to amend the claims before the decision was irrelevant. What mattered was that the appellant had not had a chance to comment on the grounds for the decision.

In T 375/00 the appellant (opponent) considered that the technical problem mentioned by the opposition division in its decision was different from that discussed in the preceding proceedings. The board held that the appellant's right to be heard had not been violated, because the definition of the objective problem was part of the arguments, not part of the grounds as specified in Art. 113(1) EPC 1973.

In T 33/93 the board stated that the citation of a board of appeal decision for the first time in the decision under appeal was not a fresh ground or piece of evidence within the meaning of Art. 113(1) EPC 1973, but a mere repetition of arguments, since it only confirmed the position duly brought to the appellant's attention.

In T 1634/10 the examining division had issued a reasoned communication setting out its objections in the light of two prior art documents. The board held that the mere fact that the examining division had not agreed with the submission of the appellant did not amount to a breach of the right to be heard.

In T 2238/11 the appellant argued that the examining division had surprisingly concluded in the "Further Remarks" section in the decision under appeal that the claimed subject-matter lacked novelty and objected that it had not been heard on that aspect. However, the decision under appeal had been based on lack of inventive step, not on lack of novelty. The board held that a party's right to be heard was not violated if the party did not have the opportunity to comment on observations in an obiter dictum (T 726/10 and T 725/05). The "Further Remarks" section in the decision under appeal did not form part of the actual decision.

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