This decision deals with an appeal against a refusal of an application by the Examining Division (ED). The applicant requested oral proceedings (OPs) before the Board but then finally decided not to attend.them. The Board is faced with a difficulty because the claims as amended give rise to a new objection of clarity:
[2.1] The Board accepts that the objections relating to the lack of clarity, which were raised by the Board in its communication pursuant to Article 15(1) RPBA, have been resolved by the amendments to independent claim 1 filed on 26 February 2010.
However, in the Board’s judgement, these amendments create new ambiguities as to the claimed subject-matter. Thus, the question arises whether the Board can base a decision on objections which would be new to the appellant, but which could not be communicated to it, due to the fact that it was not present at the oral proceedings (OPs), without infringing the appellant’s right to be heard (A 113(1)).
[2.2] Article 15(3) RPBA reads:
“The Board shall not be obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the OPs of any party duly summoned who may then be treated as relying only on its written case”.
The jurisprudence of the Boards of Appeal has underlined that this provision is to be interpreted in combination with Article 12(2) RPBA, according to which the statement of grounds of appeal shall contain a party’s complete case (cf. Singer/Stauder Europäisches Patentübereinkommen, 5th. edition, A 113, § 42).
This approach, however, cannot be taken to extremes, since a party’s case may be amended in the course of the appeal proceedings and thus may give rise to new objections to be dealt with as a consequence of these amendments being admitted and considered by the Board in the exercise of its discretional power (Article 13(1) RPBA).
The Board is nevertheless of the opinion, in line with established case law (cf. e.g. decisions T 823/04 [1], T 1059/04 [1]), that in such a situation an appellant who has decided not to attend OPs has nonetheless had the opportunity to do so and that the requirements of A 113 are thus met.
[2.3] As underlined in decision T 1704/06 [7], this approach is corroborated by the explanatory note to Article 15(3) RPBA (former Article 11(3) RPBA), which note reads:
“This provision does not contradict the principle of the right to be heard pursuant to A 113(1) since that Article only affords the opportunity to be heard and, by absenting itself from the OPs, a party gives up that opportunity” (cf. CA/133/02, 12 November 2002).
Since it is incumbent on both the EPO and users of the European patent system who are parties to proceedings before it to act in good faith (G 2/97 [4.2]), a further justification for this approach may be seen in the fact that a party who files substantive amendments to its case and then deliberately absents itself from OPs in order to avoid any adverse decision being reached would infringe this general principle. This would especially be true in situations such as the present, where the appellant had initially requested that OPs be held. The Board further observes that a different conclusion, in particular one that would recognise under such circumstances the need for further exchanges between the board and the appellant before a decision could be taken, might imply that such amendments to a party’s case would have to be considered inadmissible under Article 13(1) RPBA as being contrary to the principle of procedural economy.
[2.4] Consequently, as observed in decision T 1704/06:
“in the situation where an appellant submits new claims after OPs have been arranged but does not attend these proceedings, a board has a number of different options. It can continue the examination in writing, remit the case, grant a patent, or reject the claims as inadmissible. But it can also refuse the new claims for substantive reasons, specifically lack of inventive step, even if the claims have not been discussed before and were filed in good time before the OPs. This will in particular be the case if an examination of these substantive requirements is to be expected in the light of the prevailing legal and factual situation” (cf. T 1704/06[7.6]).
In the present situation, the Board stresses that the appellant had to expect that the conformity of the amended claims with the requirements of A 84 would be examined (cf. also T 915/02 [3]).
This decision has also been reported on Le blog du droit européen des brevets.
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