T 0123/14 - Form 2061, procedural violations

Key points

• This is an appeal against a refusal with Form 2061, a decision "according to the state of the file".
• |" The impugned decision explicitly states that the applicant had filed no comments in reply to the latest communication, which is manifestly incorrect. The Examining Division therefore ignored the arguments submitted after the communication referred to in the impugned decision and thus infringed the appellant's right to be heard, which amounts to a first substantial procedural violation." 
• This is a substantial procedural violation, the decision is also insufficiently reasoned because the applicant's argument with the last letter were ignored.
• " The Board wishes to point out that the above procedural violations could have been avoided if the Examining Division had simply issued a regular reasoned decision in response to the letter of reply taking into account the freshly presented comments." 

EPO  T 0123/14  - link

Reasons for the Decision

1. The appeal is admissible.

Procedural violation

2. According to Article 113(1) EPC 1973, the decisions of the European Patent Office may only be based on grounds and evidence on which the parties concerned have had an opportunity to present their comments.

3. The right to be heard under Article 113(1) EPC 1973 requires that those involved be given an opportunity not only to present comments but also to have those comments considered, that is, reviewed with respect to their relevance for the decision on the matter. The deciding department must demonstrably consider the comments. For an Examining Division not to violate an applicant's right to be heard, its decision has to actually address the arguments put forward by the applicant in its reply to a previous communication. It may be assumed that the right to be heard has been contravened if the reasons given for the Examining Division's decision merely repeat the reasons given for the communication issued before the said reply (see Case Law of the Boards of Appeal of the European Patent Office, Eighth Edition, July 2016, III.B.2.4.2).

4. The impugned decision explicitly states that the applicant had filed no comments in reply to the latest communication, which is manifestly incorrect. The Examining Division therefore ignored the arguments submitted after the communication referred to in the impugned decision and thus infringed the appellant's right to be heard, which amounts to a first substantial procedural violation.

5. According to Rule 68(2) EPC 1973, decisions open to appeal must be reasoned. While the deciding organ is under no obligation to address each and every argument presented by the party concerned, the reasons must enable the parties, and in the case of an appeal the Board, to assess whether the decision was justified or not. Therefore the reasons have to deal with all important issues in dispute and include considerations in respect of the core arguments presented by the appellant.

6. These requirements are not fulfilled in the present impugned decision. Without pre-empting any examination of the arguments in the letter of reply as to their substance, they can at least not be considered irrelevant at a first glance. Rather, they must be considered as at least potentially refutative. Since the decision does not demonstrably consider these arguments, neither the appellant nor the Board is in a position to assess whether the Examining Division was correct in not considering them convincing. Hence, the decision is not sufficiently reasoned, which amounts to a further substantial procedural violation.

7. The Board wishes to point out that the above procedural violations could have been avoided if the Examining Division had simply issued a regular reasoned decision in response to the letter of reply taking into account the freshly presented comments.

Remittal and reimbursement of the appeal fee

8. Pursuant to Article 111(1) EPC 1973 and 11 RPBA, the Board shall remit the case to the department of first instance in case of fundamental deficiencies, unless special reasons present themselves for doing otherwise. No such special reasons are apparent to the Board, and the appellant had requested and agreed to a remittal.

9. The appeal is allowable in so far as the procedural violation is concerned. Due to the missing reasoning, the appellant had to appeal in order to prosecute the case further. The conditions of reimbursement of the appeal fee pursuant to Rule 67 EPC 1973 are therefore fulfilled.

Order

For these reasons it is decided that:

1. The case is remitted to the Examining Division for further prosecution.

2. The appeal fee is to be reimbursed.