The right to be heard is a right not just to present comments but also to have those comments duly considered. Amendments and arguments submitted by a party need to be considered, and the party must be given an opportunity to comment on the grounds and evidence brought forward by the examining division (see T 1123/04 and T 852/07). A document may not be cited for the first time in a decision (see T 635/04) unless it has been introduced during oral proceedings. The use of fresh arguments in a decision still based on grounds and evidence communicated beforehand is not precluded (see T 268/00 and T 1557/07).
If a case is remitted from the boards of appeal for further prosecution, the examining division must check whether requests from examination proceedings prior to the appeal are still outstanding and must give the party an opportunity to comment (see T 1494/05). If the facts and grounds essential to a decision have been submitted by one party and if the party whose case is to be rejected has been afforded sufficient time to comment, the principle concerning the right to be heard set out in Art. 113(1) will have been respected. If the decision in opposition proceedings is to be based on grounds which were raised in the examination proceedings but not in the notice of opposition, the observations by the parties or the communications of the opposition division, these must be introduced (i.e. raised for discussion) by the opposition division in the opposition proceedings before the decision is given so as to afford the parties an opportunity to comment. If the opposition is based on lack of inventive step, the proprietor of the patent must expect that the prior art newly designated in the opposition proceedings will be considered in conjunction with the prior art described in the introductory part of an independent claim. However, if new facts and grounds are introduced during the proceedings or if the facts and grounds on which the envisaged decision is to be based were not stated so unambiguously and clearly in the written submissions of the parties as to give a party occasion to comment, the party concerned must be given an opportunity to submit an opinion and to produce evidence before the decision is given.
A patent proprietor's right to be heard has not however been violated if, by making only minor amendments to the claims in response to a communication from the opposition division setting out the material arguments against maintaining the patent as it stands, the result is that the grounds for revoking the patent remain essentially unchanged, provided the proprietor's comments have been duly considered.
In such a case, where the obstacles to maintenance have already been put to the proprietor and continue to apply, the patent may be revoked immediately, without any need to communicate again the full arguments on which the decision would be based.