T 1557/07 – Limits of the Right To Be Heard

[...] In the present case, the Examining Division (ED) raised an objection under A 83 in a first communication pursuant to A 96(2) EPC 1973. [In their reply], the applicants submitted arguments against the raised objection and filed new application documents, in particular amended claims. The ED then issued the decision under appeal refusing the application on the ground of A 83. [2.1]

The representative of the appellants submitted that the ED, without having given any warning that the application might be refused, issued the decision under appeal although [their reply] represented a “bona fide attempt to overcome the objections raised” and the amended claims filed with this letter created a significantly new factual situation. Under these circumstances, following T 734/91, A 113(1) required the issue of a second communication dealing with the substantial comments of the applicants and the amended claims. Indeed, the appellants, two private persons, had a fair expectation to receive a further communication. Moreover, the contested decision was deficient under two aspects. First, the arguments produced by the appellants “were not addressed fully nor accurately” by the ED and, second, a statement was made “for the first time in the proceedings in the reasons for the refusal” in point 1.7 of the Reasons, last paragraph. All this amounted to a substantial procedural violation which justified the remittal of the case to the ED for further prosecution and the reimbursement of the appeal fee. [2.2]

It should be noted that, in the present case, the provisions of A 113(1) are met to the extent that the decision is based on the same ground (A 83) and evidence mentioned in the [first] communication. Therefore, the question to be considered only concerns whether the ED had an obligation to issue a second communication giving the appellants an opportunity to present further comments. The fact that the appellants as private persons had a fair expectation of a further communication is not relevant for the question at issue since they were represented by professional representatives before the EPO.

Pursuant to A 94(3) EPC 1973, if the examination reveals that the application does not meet the requirements of the EPC, the ED shall invite the applicant, “as often as necessary”, to file his observations. Thus, the ED had a power of discretion to either send a second communication or to issue a decision. A 113(1), however, limits the exercise of this power by requiring that the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. [2.3]

With regard to the appellants’ submissions, a first issue relates to the allegation that the contested decision relied on fresh arguments. In principle, the Board has no reason to depart from T 268/00, according to which the use of a fresh argument in a decision still based on grounds and evidence communicated beforehand is not precluded. Notwithstanding this, in the present case the ED came to the conclusion that it was not convinced that a skilled person was actually able to achieve the intended effect […]. This statement is also mentioned in the [first] communication on which the appellants have had an opportunity to present their comments, this opportunity having been taken with [their] reply. Thus, the allegation at issue is not conclusive. [2.4]

A further issue concerns the amended claims. […] Claim 1 filed with the reply does not differ from claim 1 of the application as filed in such a way that the reasons for the raised objection under A 83 would substantially change.

[Therefore], the circumstances of the present case are not comparable with those underlying T 734/91. In that case the appellant had filed a fresh set of claims in reply to a communication of the ED, the subject-matter of claim 1 being considerably changed in the light of the objection of lack of novelty raised by the ED. [2.5]

A further issue concerns the allegation that the ED did not fully and accurately deal with all the relevant arguments submitted by the applicants in their reply. Provided that the reasons given enable the appellant and the Board to understand whether the decision was justified or not, the ED is under no obligation to address each and every argument presented by the party concerned. In the present case, the ED commented on the crucial points of dispute thus giving the applicants a fair idea of why their submissions were not considered convincing. This allegation is therefore also not conclusive. [2.6]

In conclusion, the ED did not commit a substantial procedural violation. [2.7] 

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