One more decision dealing with an Examining Division (ED) ignoring a request for oral proceedings (OPs) …
The applicant had replied to a communication sent by the ED; at the end of its letter, there was the following statement:
The ED nevertheless refused the application without OPs; the decision contained the following paragraph:
The Board found this refusal to hold OPs to constitute a substantial procedural violation:
[3.1] In the [applicant’s] view, the phrase “In the case of the Examining division would decide to reject the application, an oral proceeding would be requested pursuant to article 116 EPC.” concluding the applicant’s reply to the ED’s communication constituted a valid request for OPs. Thus, by refusing the application without summoning to OPs, the ED committed substantial procedural violations in the following respects :
(i) the ED’s decision was based on a perverse and illogical interpretation of a request, and contravened the principle of legitimate expectations;
(ii) the decision violated the applicant’s fundamental right to be heard;
(iii) the ED ignored the EPO’ obligation to warn applicants if errors or omissions would lead to a loss of rights;
(iv) the case law relied on by the ED was not relevant to the present case.
[3.2] In the contested decision, the ED noted that the applicant had not requested OPs pursuant to A 116 […] because the cited phrase, due to the use of the subjunctive form “would be requested”, did not constitute a request for OPs. Reference was made in this respect to decisions T 528/96 and T 299/86. Consequently, instead of issuing a further communication or a summons to OPs, the ED issued its decision to refuse the application.
[3.3] In the Board’s view, the ED’s interpretation is not altogether unreasonable and thus cannot be qualified as “perverse” or “illogic”. After all, the [applicant] itself takes into consideration the possibility of “errors and omissions” […]. Moreover, as a matter of principle, it lies in a party’s responsibility to file its requests in an unambiguous manner. In this context, it is added that, up to the decision taken, there is no action apparent on the part of the ED which could have nurtured any legitimate expectations on the applicant’s side as to a positive outcome of the examination proceedings.
[3.4] On the other hand, the ED’s categorical position that there was no valid request for OPs is not tenable. Notwithstanding its inherent ambiguity due to the use of the subjunctive formulation, the phrase in question leaves little doubt about the applicant’s intention to avoid an immediate refusal of its application.
In this situation, any risk of procedural deviance could have been easily avoided if the ED had sought respective clarification from the applicant before issuing its decision.
In fact, in the Board’s understanding the phrase in question should be considered more likely as a request for OPs than not.
[3.5] The ED saw analogies in its interpretation to the factual situations underlying decisions T 528/96 and T 299/86.
The Board disagrees because the statements made in these cases could not reasonably be interpreted as actual requests for OPs.
In case T 528/96 a patentee had stated in its response to the opposition “Should the opposition division feel that further information is required, the patentee will be pleased to respond in due course, either in writing or during the oral hearing”. The then deciding board did not consider the reference in this statement to an “oral hearing” to constitute a formal request for OPs according to A 116 (T 528/96 ).
In case T 299/86 the deciding board held in its interlocutory decision […] that the phrase “I reserve my right to request OPs under A 116” is not in itself an actual request for OPs since a clear distinction has to made between actually “making a request for OPs” and “reserving the right to make a request for OPs” (T 299/86 ).
[3.6] Instead, given the circumstances of the present case, the Board sees considerable similarities to the facts underlying case T 1136/10, where an applicant had stated “… should the Examiner feel disposed to reject the application at any time, we would request OPs, purely as a precautionary measure, so as to avoid such a rejection”.
[3.7] In view of the above observations, the Board has come to the conclusion that the phrase concluding the applicant’s letter of 7 April 2010 should have been understood as a valid request for OPs in case the ED considered a rejection of the application. Ignoring this request constitutes a substantial procedural violation on the part of the ED since it deprived the applicant of its right to OPs (A 116) and of its right to be heard (A 113(1)).
Therefore, the Board complies with the [applicant’s] main request by setting the decision under appeal aside and remitting the case to the ED for OPs under A 116 to take place.
Moreover, it is equitable that the appeal fee should be reimbursed pursuant to R 103(1)(a).
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