In reply to the citation by the Examining Division (ED) of two new documents on 13 March 2012, the appellant submitted in the fax of 14 March 2012, i.e. one day prior to the oral proceedings (OPs) before the ED, that “in view of the very late citation of new references” it was “simply impossible to study the newly cited prior art D4 and D5 and get appropriate instructions from the US-client (via a US-law firm) within this extremely short time of one working day”. The appellant therefore requested to “set a new date for the hearing”, “to give all parties … sufficient time to review newly cited documents and discuss/prepare proper amendments”, see statement of grounds and letter of 14 March 2012.
[3.1] Given these facts, the board considers it necessary to examine whether the appellant’s right to be heard was violated because the subject of the proceedings had changed shortly before the date set for the OPs and whether the ED should have cancelled these proceedings and fixed a new date for them.
[3.2] Under A 113(1) EPC 1973, decisions may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. The applicant therefore has the right to react to objections raised by the ED. This can be done by providing comments or by amending requests in order to take into account the objection raised by the division.
[3.3] R 71a(1) EPC 1973 (corresponding to R 116(1)) specifies that, when issuing the summons to OPs, the EPO shall draw attention to the points which in its opinion need to be discussed for the purposes of the decision to be taken. At the same time a final date for making written submissions in preparation for the OPs shall be fixed. New facts and evidence presented after that date need not be considered, unless admitted on the grounds that the subject of the proceedings has changed (see also German and French versions of R 116(1): “soweit sie nicht wegen einer Änderung des dem Verfahren zugrunde liegenden Sachverhalts zuzulassen sind”, “à moins qu’il ne convienne de les admettre en raison d’un changement intervenu dans les faits de la cause.”) This provision has to be interpreted in the light of A 113(1) EPC 1973 so as to give the applicant an opportunity to submit comments or, if necessary, make amendments to its requests in view of the points to which the EPO drew attention. This principle is also reflected in the Guidelines for Examination, E-III 8.6, in the version of April 2010, stating that the parties “should always be given the opportunity to submit amendments intended to overcome objections raised by the Division which depart from a previously notified opinion.”
[3.4] In the present case […] the ED summoned to OPs indicating that claims 1 and 15 lacked clarity and that the subject-matter of these claims lacked novelty in view of D3. Following the submission of amended claims a telephone consultation took place, the results of which were communicated to the appellant and read as follows:
“The first examiner informed the representative that the current claim 1 lacked clarity concerning the the (sic) definition of the building blocks of the sensing system. The first examiner asked the representative to submit an improved version of claim 1, in order to overcome that deficiency.”
The appellant could therefore conclude that the objection with respect to lack of novelty in view of D3 had been overcome and that only clarity would have to be discussed in the OPs.
As a consequence, the appellant submitted amended claims asserting that they were “clarified as proposed by the Examiner” and expressed the view that it should be possible to cancel the OPs.
Two days before the OPs the ED informed the appellant that the date for OPs was maintained, introduced two additional documents D4 and D5 into the procedure, and objected that the subject-matter of claim 1 was not new in view of D4. The next day, the appellant requested postponement of the OPs in view of this new objection.
The board notes that the new objection was not related to any of the points which had been indicated in the summons. In particular, a discussion of novelty based on D4 could not be expected after amendments had been filed and discussed in the telephone interview. Hence, the subject of the OPs had changed.
[3.5] Under these circumstances, the appellant should have been given an adequate opportunity to react to the new objection either by submitting comments or by amending its requests.
[3.6] The ED’s argument that the appellant had sufficient time for a thorough consideration of D4 and D5 and that the appellant could not possibly be surprised by this decision is not convincing. The representative was given one working day to get acquainted with D4 and D5, contact its client and – if necessary – provide amendments overcoming the objections. The board accepts the argument of the appellant’s representative that it was impossible in view of the short timeframe to get appropriate instructions from the client.
[3.7] The board notes that the appellant’s representative deliberately chose not to attend the OPs on 15 March 2012. He also repeatedly expressed in writing the wish to avoid OPs. Procedural economy and legal certainty for third parties require that an applicant should not be allowed to prevent an ED from carrying out the examination in an efficient manner, for instance by delaying the decision or postponing the OPs (see also R 71(2) EPC 1973 corresponding to R 115(2)). However, the circumstances of the present case are exceptional, because two days before the date of the OPs the ED changed essential facts of the case on which it had relied in the summons to OPs. Attending the OPs would not have changed the fact that, in the present case, the timeframe of one working day was too short for the appellant to get appropriate instructions and to prepare for OPs which now had a new focus.
[3.8] Hence, rejecting the appellant’s request for a postponement of the OPs infringed the appellant’s right to be heard. Had the appellant been given sufficient time to react to the new objection, the ED, in dealing with the appellant’s arguments, could have explained the reasons why it was of the opinion that the different references to D4 did not constitute a conflation of prior-art embodiments with the embodiments of the invention and why the schematic drawing of figure 4 in D4 did disclose the arrangement of the components on a common substrate. This exchange of arguments could have avoided the necessity to file an appeal, or would have permitted the board to examine the case in full knowledge of the first instance’s view on the contentious issues.
[3.9] As a result the board considers reimbursement of the appeal fee to be equitable by reason of a substantial procedural violation (R 67 EPC 1973).
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