Monday, 20 May 2013

T 2373/11 – All Too Literal

This is an appeal of an applicant whose application had been refused by the Examining Division (ED).

The applicant explained that he had been deprived of oral proceedings (OPs).

*** Translation of the German original ***

Violation of the right to OPs

[2.1] According to the established case law of the Boards of appeal, in examination proceedings the ED has to grant a request for OPs pursuant to A 116 on behalf of an applicant before it can issue a decision that adversely affects the latter, such as a decision to refuse [its application]. In view of the wording of A 116 the ED has no margin of discretion at all. This obligation that is derived from the fundamental procedural principle of the right to be heard has also found an expression in A 112a(2)(d) in connection with R 104(a), in the context of substantial procedural violations.

[2.2] In its response dated August 20, 2009, the [applicant] had filed a request for a “hearing” (“Anhörung”) in case the ED intended to refuse the present application […]. According to the impugned decision the ED was, however, of the opinion that a request for a hearing could not be considered to be a request for OPs pursuant to A 116 and that [the applicant] was not legally entitled to an oral hearing under the EPC […].

[2.3] In this context, however, the impugned decision does not indicate anywhere how the term “hearing” would have to be concretely interpreted, i.e. what the ED understood the request for a hearing to actually mean. In particular, it is not clear from the decision whether the request for a hearing was considered to be a request for an informal personal or telephone interview, which the ED, as a rule, is not obliged to grant (see the Guidelines of April 2010, C-VI, 6.2; C-VII 2.1 as of June 2012).

[2.4] According to the relevant case law, a request for a “hearing” can on the one hand be understood to be equivalent to a request for “OPs” within the meaning of A 116(1) (cf. T 417/00 [2.3]; T 1829/10 [2.4]) and, on the other hand, can be a request for OPs or an informal interview (cf. T 917/93 [3]). Therefore, the Board can accept that it was not unambiguously clear to the ED, when it was faced with a request for a “hearing” - considered literally and at first sight - that this was beyond doubt a request for OPs.

[2.5] It is true indeed that the applicant would have been well-advised to make its request in an unambiguous way (e.g. by expressly using the expression “OPs” and/or [a reference to] A 116). However, as the relevant procedural right is so fundamental, the ED would have had to ask the applicant for a clarification if there was the slightest doubt that what had been requested was indeed OPs or not (cf. T 19/87 [5]; T 668/89 [3]; T 417/00 [2.3] T 1829/10 [2.4]). In the present case this was not done.

[2.6] Rather, the communication of the ED dated July 13, 2010, made the applicant believe that summons to OPs were to be expected as the next procedural step, unless the claims were substantially amended in view of the objections that had been raised […]. 
NB: The communication contained the following statement: “As the objections of the ED have already been explained in detail and discussed during the international phase, the next proedural step will be the summons to OPs unless the claims are substantially amended in view of the objections that have been raised.”
Thus the applicant was right in assuming that its request for OPs had been understood as a request for OPs and that there was no further need for clarification as to the request for a hearing. Thus the applicant was surprised by the fact that there were no summons to OPs before the final decision on the case was issued, all the more as the amendments to the claims the applicant had filed in response to the above communication only comprised “linguistic adjustments” and did not correspond to substantial amendments […].

Under these circumstances the ED should have summoned OPs or at least clarified [the situation] before taking the decision to refuse [the application]. The refusal without prior summons to OPs or clarification constitutes a procedural violation.

[2.7] In view of the question whether the case was to be remitted and the appeal fee reimbursed, it is necessary, according to the established case law of the Boards of appeal, to distinguish between a “substantial procedural violation”, which objectively affects the whole proceedings (cf. J 7/83 [12]) and a subjective “error of judgment” (Fehleinschätzung) of the first instance (see, e.g. T 19/87 [5]). The Board is of the opinion that, in principle, an “error of judgment” occurs only when the first instance, despite its desire to assess a case subjectively “correctly” and despite all due care, reaches a decision on a request that is objectively “wrong”. However, this is not what has happened here.

As a matter of fact, the ED, when interpreting the request for a “hearing”, has limited itself to a literal interpretation instead of trying to understand this – apparently not completely unambiguous – request. Moreover, the subjective interpretation of the term “hearing” has not even be justified (see point [2.3] above). The ED only explained that there was no legal right to a hearing under the EPC. If this logic was to be followed, for instance, “auxiliary requests” of a party could be ignored because they are never mentioned expressis verbis in the EPC and, therefore, would have to be considered inadmissible. Thus the ED has not made a serious effort to assess the facts in a manner that is as objective as possible.

Moreover, the ED did not strive to clarify the factual situation in regard of all the doubts it might have had, e.g. by means of a telephone call (cf. point [2.5] above). Thus the Board is of the opinion that [the ED] has not exercised all due care and has accepted the case to remain pending for several years because of an all too literal interpretation instead of obtaining a final first instance decision on this case by means of OPs – which can, as a rule, be carried out within a day. Moreover, by conditionally announcing OPs, it has raised wrong expectations in the applicant and, consequently, has objectively mislead it, thereby violating the generally accepted prohibition of “venire contra factum proprium”.

[2.8] Therefore, the Board is of the opinion that [the ED] has objectively violated the inalienable right of the applicant to OPs, which is anchored in A 116(1). This amounts to an infringement of a procedural principle of the EPC and, therefore, to a procedural violation. As this procedural violation has deprived the applicant of the opportunity to overthrow the negative opinion of the ED by filing new arguments and/or requests during OPs terminating the examination proceedings, and therefore to have a decisive influence on the first instance decision, this has to be considered to be a substantial procedural violation.

[2.9] Thus the impugned decision has to be set aside, for the reasons given above.

The Board decided to remit the case to the ED. It then dealt with the request for reimbursement of the appeal fee:

[4] As the appeal has to be allowed and as the first instance has committed a substantial procedural violation (see points [2.8-9] above), the question of whether the appeal fee has to be reimbursed requires the assessment, in application of R 103(1)(a), whether such a reimbursement is equitable, i.e. if there is a causal link between the substantial procedural violation and the need to file an appeal.

In this context it has to be noted that during the examination proceedings the applicant has not behaved in a way that would raise suspicions as to whether it intended to delay the proceedings or to commit a procedural abuse. Rather, it has responded to the communications of the ED in due time by filing amended claims and counter-arguments […]. Moreover, during OPs the applicant would have had a very last opportunity of avoiding a refusal by filing further amendments or counter-arguments. As the ED has deprived it of this very last opportunity by not summoning it to OPs, it had to file an appeal against the decision to refuse [its application] in order to safeguard its right to OPs and to avoid a final refusal of the application, respectively.

Thus the Board is of the opinion that there is a causal link between the substantial procedural violation committed [by the ED] and the filing of the appeal and the payment of the appeal fee, respectively. Therefore, it is also equitable to reimburse the appeal fee pursuant to R 103(1)(a) in this case.

NB: The Board has provided a headnote:
In case an organ of the EPO has doubts whether a party has required OPs (e.g. when a “hearing” has been requested), it has to clarify the situation in order not to commit a substantial procedural violation (see points [2.4-7])
Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.