T 2535/22: Aanvragers zijn zelf verantwoordelijk voor het aanvragen van extra tijd indien nodig.

Case Law Summary T 2535/22

Background
European application No. 16 753 905 was refused by the Examining Division [ED] under Art. 97(2) EPC. The main request and auxiliary requests 1, 2 and 4 to 8 were not admitted into the proceedings. Auxiliary request 3 was refused under Art. 123(2) EPC due to its subject matter not being originally disclosed and under Art. 84 EPC due to lack of clarity.


The Appeal
The applicant (Appellant, A) filed an appeal requesting that ED’s decision be set aside and that the case be remitted back to the ED for further examination. As auxiliary requests, A requested that ED’s decision be set aside and a patent be granted on the basis of the requests on which the decision was based or on the basis of the requests filed in response to the Summons to oral proceedings before the ED.

In response to a communication by the Board, A’s final requests are to set aside ED’s decision and to grant a patent based on auxiliary request 3a filed during the oral proceedings before the ED. As auxiliary request, A requests a patent be granted based on the claims according to further, lower-ranking auxiliary requests.

Claim requests

With the written submissions filed in response to the Summons to oral proceedings issued by the ED, A filed a main request and auxiliary requests 1-3.

During a telephone consultation two days before the oral proceedings, ED presented objections under Art. 84 EPC, lack of clarity.

A argued that they had been deprived of a fair hearing and that their right to be heard under Art. 113(1) EPC had been violated. Referring to the EPO Guidelines for Examination, E-III 8.3.3.3, A argued that most of these objection should have been raised in the annex to the Summons to oral proceedings. A further argued that after the telephone consultation, only two days before the oral proceedings, new requests had to be hastily prepared and submitted the day before the oral proceedings.

In the opinion of A, the “clear allowability” criterion, applied by the ED in their assessment of the allowability of the newly filed requests, was too strict in view of the short time A had to prepare the new requests which addressed the newly raised objections under Art. 84 EPC. A had therefore been deprived the right to a fair hearing and their right to be heard, and either the requests should have been “allowed in” or considered allowable if they overcame the objections under Art. 84 EPC.

These arguments did not convince the Board, who found that ED’s decision does not violate applicant’s right to be heard as stipulated by Art. 113(1) EPC.

The Board noted that in the time between the issuance of the Summons to oral proceedings and the oral proceedings, several e-mails were exchanged with the first examiner and two telephone consultations took place, respectively two and one day before the oral proceedings. The day before the oral proceedings, A filed new requests according to a main request and auxiliary requests 1 to 8, replacing the requests filed with the written submissions in response to the Summons to oral proceedings.

During the oral proceedings, all requests filed the day before were discussed with respect to their admittance, and for those admitted, the compliance with Art. 123(2) EPC and Art. 84 EPC was discussed. The decision under appeal is therefore based on grounds on which A had an opportunity to comment during the oral proceedings.

With respect the question of whether A had been given enough time to prepare new requests, the Board noted that an applicant has to be prepared to discuss, during oral proceedings, the admittance and the allowability of their requests. If the applicant is of the opinion that they do not have enough time to properly respond, e.g. by filing further amended claims, it is applicant’s responsibility to either request more time or a postponement of the oral proceedings.

The Board further noted that auxiliary request 3a, filed the day before the oral proceedings, was admitted into the proceedings and discussed in substance during the oral proceedings. In the minutes of the oral proceedings, there is no indication that A had asked for more time or requested postponement of the oral proceedings.

The Board therefore concluded that A had not established that it had not been given enough time to react to the objections on which the decision under appeal was made, and that therefore the decision did not violate the right to be heard under Art. 113(1) EPC.

Decision of the Board (of Appeal)

The Board however agreed with A that the objection under Art. 84 EPC, on which the decision to refuse was based, was not well founded. The Board therefore remitted the case back to the ED for further prosecution on the basis of auxiliary request 3a.

Summary written by the NLO EPO Case Law Team.