2.5.1 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.4.3.9 "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 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 1973 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 he wished, within a fixed period of time, to present his comments or modify his 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 1973. 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 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. In the case underlying T 281/03, 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 chairman'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 chairman 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.

In R 3/10 the Enlarged Board of Appeal allowed the petition for review. The petitioner had had no opportunity to comment on the inventive step of its main request before the chairman informed the parties that the board would decide on "patentability" of the main request. The board then held that the main request was novel but lacked an inventive step. According to the Enlarged Board of Appeal, the term "patentability" covered a variety of potential objections and the chairman could not have meant to address all of them. The petitioner had had no reason to assume that the board's decision would address more than what had been previously discussed, i.e. novelty (see also chapter V.B.4.3.19 "Successful petitions under Article 112a(2)(c) EPC").

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