Monday, 1 February 2010

T 1997/08 – Hearing is Not Listening

In the present case an application was rejected for lack of novelty and inventive step. There was one single A 96(2) notification. The applicant responded by pointing out the essential differences with respect to the prior art. The Examining Division (ED) then rejected the application. The Board of appeal comes to the conclusion that the claimed subject-matter is both novel and inventive. It then considers the question of the right to be heard:

[…] The ED has recognised the meaning of the response to the notification and has accurately summarised it in its decision. The ED therefore has taken notice (zur Kenntnis genommen) of the submission of the applicant in its response to the notification. However, this does not establish that the ED has actually considered (in Erwägung gezogen) this submission in the reasons for the impugned decision.

The right to be heard in legal matters ensures that the EPO is ready to take notice of and to consider the submissions of a party (T 94/84).

Therefore, the right to be heard has not been granted if the deciding instance merely accepts a response to the single notification and summarises it. This principle also comprises the duty to take into consideration the response to the notification – if it manifestly concerns the reasons for the decision and could have an effect on the latter – in the reasons of the decision. Only then the right to be heard has been granted. [4.3]

The Board does not find any hints in the remaining parts of the impugned decision that the ED has taken into consideration the submission in the response to the notification. The second part of the decision “Reasons for the decision” almost literally repeats the objections of the single notification. In the first paragraph “The WO document …” has been replaced by “The figure of the WO document …” and the precision “Because the applicant wants to maintain the wording without amendments and does not accept to limit the claim with respect to D1 by adding further features …” has been added. Moreover, a similar sentence has been added to the final paragraph: “Although the applicant has been invited to do so, no amended claims have been filed”.

In other words, the reasons for the impugned decision essentially corresponds to a “copy and paste” of the reasons of the single notification of the ED. Such reasons, which essentially consist in repeating the notification of the ED, cannot logically speaking take into consideration the subsequent response to the notification. There is, therefore, no doubt that the submission in the response to the notification was not taken into consideration at all in the impugned decision. [4.4]

Whether there have been sufficient opportunities to overcome objections and whether the decision has been reached in the lowest possible number of steps – as stated in the decision - is irrelevant here. What is decisive for granting the right to be heard is whether the ED has actually taken into consideration the submission of the applicant of which it had taken notice. There is no indication in the decision that this is the case. [4.5]

Therefore, the procedural principle of the right to be heard has been violated, which is a substantial procedural violation. [4.6]

A similar reasoning is found in T 763/04 [4.4] where the Board stated : “It is not sufficient to observe A 113(1) merely formally by granting the Applicant the procedural possibility for presenting comments, as this was the case here. This procedural step falls short of its legislative purpose and remains a pure formality, if there is no trace in the file that such comments were indeed read and discussed on the merits, beyond a mere acknowledgement of their existence. In summary, A 113(1) requires not merely that a party be given an opportunity to voice comments, but more importantly it requires that the deciding instance demonstrably hears and considers these comments.” 

To read the whole decision (in German), click here.