Substantial procedural violation by the Examining Division for not appointing Oral Proceedings | T 2024/21

Catchwords

• Examining division's continual refusal to appoint oral proceedings rendered the appellant's request for oral proceedings futile. Withdrawal of the request for oral proceedings under these circumstances does not absolve the examining division from its duty to hold oral proceedings (Reasons 1.5). 

Background

In case T 2024/21, the Search Division (SD) issued a negative European Search Opinion, raising objections of clarity (Art. 84 EPC) and lack of inventive step (Art. 56 EPC). The Applicant (A) provided a substantiated response with amended claims and description and requested Oral Proceedings (OP). 

After that, a first communication was issued by the Examining Division (ED), wherein they raised new objections of added subject matter under Art. 123(2) EPC and lack of clarity (Art. 84 EPC). In addition, ED informed A that no further amendments would be allowed under R. 137(3) EPC unless the objections under Art. 84 EPC and Art. 123(2) EPC were resolved. 

A replied to the communication by expressing its disagreement with regard to the outstanding objections under Art. 84 EPC and Art. 123(2) EPC. Again they requested OP, in particular to discuss these topics. In addition, amended claims were filed and the outstanding issues of novelty and inventive step were addressed. 

ED issued a new communication stating that it maintained their objections but without further addressing the newly filed arguments of A. In addition, they informed A that it did not "give its consent under Rule 137(3) EPC to the newly filed set of claims (Guidelines H-II, 2.3.1.2 and 2.3.1.3). The legal effect of this is that there is no agreed text, which would result in a refusal under Article 113(2) EPC."

In response, A withdrew the request for OP and requested a decision according to the state of the file. Moreover, they complained about the conductance of the proceedings, and in particular that their request for OP had not been taken into account and met. A considered that OP would have brought “the examination to a close in an efficient and effective way”.

ED responded that they could only issue a decision if no further amendments or arguments were submitted. In addition, they added that "With respect to the so far missing summons to oral proceedings, as commented by the Applicant: Please note that it is the duty of the Applicant (not of three members of the European Patent Office) to fulfill the requirements of the EPC, to adapt the description appropriately and to provide an admissible and agreeable claim text which is adequate to provide remedy (with promise of success) and with which consensus can be achieved (Rule 137(3) EPC); a consensus (or at least an adequate approach) which is worth to spend the time and costs in oral proceedings. Please further note that oral proceedings increase the workload for three members of the Examining Division and not "reduce" it as supposed by the Applicant. Please further note that a proper amendment should be present as a first step for the Examining Division to do the next step, be it oral proceedings or to give consent. In such a case the Examining Division might be in the position to adequately and positively support the interests of the Applicant. Please further note that from the beginning, id est since the first amendments of the Applicant were submitted, the basic requirements of Article 123(2) were not met. Formulating an allowable claim text, also, is not the duty of an Examining Division." (point IX)

After that, A confirmed it withdrew its request for OP and again requested a decision according to the state of file. As expected, ED refused the application and A appealed the decision of refusal.

The Appeal

The Board was very clear in their reasoning that a substantial procedural violation took place:

“According to established case law the right to an oral hearing is an extremely important procedural right which the EPO should take all reasonable steps to safeguard (T 668/89, T 808/94, T 556/95, T 996/09, T 740/15). If a request for oral proceedings has been made, such proceedings have to be appointed. This provision is mandatory and leaves no room for discretion (T 283/88, T 795/91, T 556/95, T 1048/00, T 740/15), i.e. parties have an absolute right to oral proceedings. Considerations such as the speedy conduct of the proceedings, equity or procedural economy cannot take precedence over this right (cf. Case Law of the Boards of Appeal, 10th edition, III.C.2.1).” (reasons 1.1)

The Board considered that the ED had incorrectly understood what the right to OP as enshrined in the EPC means. The fact that OP causes costs is anyway no reason not to comply with A’s repeatedly expressed wish to hold OP. Instead of summoning A to OP to discuss the objections, the ED had merely informed A that the amended documents were not admitted because of not resolving the defects. 

This constitutes a substantial procedural violation since the issue of non-admittance of amendments under R. 137(3) EPC should have been discussed during OP. This is a discretionary decision and therefore A would also have had the right to be heard on the topic of admittance. In addition, “[s]ince the examining division based its non-admittance of the amended application documents on the failure to overcome objections raised under Articles 84 and 123(2) EPC, the appellant would thus also have had to be heard at the oral proceedings on the question of whether these objections had been overcome. ” (reasons 1.4)

Regarding the withdrawal of the request for OP, the Board reasoned as follows:

“…, it can only be concluded that the examining division's continual refusal to appoint oral proceedings and indeed its explanation for not doing so (see point IX above), made it evident that the appellant was left with no realistic possibility to have its request for oral proceedings met.” (reasons 1.5)

“The Board thus considers that withdrawal of the request for oral proceedings under these particular circumstances did not therefore absolve the examining division from its duty to hold the originally requested oral proceedings.” (reasons 1.5)

Decision of the Board of Appeal

The Board decided that even though A ultimately withdrew its request for oral proceedings and requested a decision on the state of the file, it was deprived of its right to be heard in OP as enshrined in Articles 113(1) and 116(1) EPC. The decision under appeal is therefore set aside. 

The case was remitted to the ED for further prosecution and the appeal fee was reimbursed.