T 2138/14 - Not attending oral proceedings examining division

Key points

• The applicant did not attend the oral proceedings before the ED. The ED raised a new clarity objection during the oral proceedings. The Board considers this to be a substantial procedural violation.
• “According to G 4/92 a decision against a party who has been duly summoned but who fails to appear at oral proceedings may not be based on facts put forward for the first time during those oral proceedings []. Although Opinion G 4/92 explicitly only concerns inter partes proceedings [], the same principle has been applied in ex parte proceedings [].”
• As a comment, Art.113(1) EPC refers to "grounds or evidence" but G 4/92, hn.1  refers to "facts put forward for the first time during those oral proceedings"
• Furthermore about whether D7 evidences common general knowledge: “D7 may not be an article providing a broad review of a topic, but it refers to snapping as "one of the most frequently used techniques". In the board's view, the reference in an article of a technical journal to a certain technique as being "one of the most frequently used techniques" has the effect that the technique can be considered to be part of the common general knowledge of the skilled person. As in the case of a review article, D7 is not cited for the document's own contribution to the art, but as a reference to what is common in the technical field. As a consequence, D7 proves what an experienced person in the field in question is expected to be aware of "

EPO T 2138/14 -  link

Reasons for the Decision

1. The appeal is admissible.

Alleged procedural violations

2. The appellant argued in the statement of grounds of appeal that its right to be heard had been infringed, since no objection regarding lack of clarity of the term "proximate" had been raised in the examination proceedings prior to the decision.

2.1 The relevant procedural steps in the present case may be summarised as follows.

In the European search opinion the examining division cited documents D1 to D5. It argued that the subject-matter of independent claims 1 and 9 lacked novelty in view of D1. The subject-matter of the dependent claims was considered to lack an inventive step in view of D1 in combination with documents D2 to D5. Subsequently, the applicant submitted amended claims and arguments addressing the objections.

The examining division issued a communication on 25 June 2013, in which an objection of lack of inventive step in view of D1 and D2 was raised. In reply the applicant submitted further arguments.

The examining division issued summons to oral proceedings and introduced document D6 into the proceedings. It raised an objection of lack of novelty in view of D6 against the subject-matter of the independent claims. The division also stated that the objections made in the previous communications in view of D1 to D5 were maintained. The applicant replied by maintaining its main request. In addition, it filed claims of first and second auxiliary requests.

Oral proceedings before the examining division were held as scheduled on 15 May 2014. As announced in a letter dated 7 May 2014 the applicant did not attend the proceedings. During the oral proceedings the examining division discussed objections of lack of clarity and inventive step and came to the conclusion that the requirements of Articles 84 and 56 EPC were not fulfilled (see minutes of the oral proceedings).

The decision regarding the main request is based on an objection of lack of clarity of the term 'proximate' and an objection of lack of novelty of the subject-matter of claim 1 in view of D6. In a strict interpretation of the term 'proximate' the subject-matter of the independent claims was considered to lack an inventive step in view of D6 and common general knowledge (see decision under appeal, points II.1 and II.2). The division also found that the subject-matter of claim 1 of the first and second auxiliary requests did not involve an inventive step in view of D6 (see points II.3 and II.4 of the decision under appeal). It appears from point III of the decision that the examining division considered the objection of lack of clarity to apply to all requests.

2.2 Hence, as argued by the appellant, no clarity objection was raised or discussed in the written proceedings, in particular, no such objection was raised regarding the term "proximate" which had been present in claim 1 of all claim sets submitted in the proceedings before the department of first instance. This objection was discussed for the first time during the oral proceedings that were held in the absence of the applicant (see minutes of the oral proceedings).

Similarly, no objection of lack of inventive step of the subject-matter of claim 1 of the main request and the first and second auxiliary requests in view of D6 and common general knowledge was raised prior to the oral proceedings.

Both of these objections of non-compliance with Article 84 EPC and Article 56 EPC, respectively, are based on new grounds within the meaning of Article 113(1) EPC.

3. According to Rule 115(2) EPC if a party duly summoned to oral proceedings before the EPO does not appear as summoned, the proceedings may continue without that party.

3.1 In line therewith several decisions by the boards confirm that an applicant should expect the amendments it has made to be examined at oral proceedings held in the applicant's absence with regard to their conformity with the requirements of the EPC, in particular those of Article 123(2) EPC (see Case Law of the Boards of Appeal of the European Patent Office, 9th edition 2019 (hereinafter "CLBoA"), III.B.2.7.2). This principle is reflected in the Notice from the European Patent Office concerning non-attendance at oral proceedings before the examining division, which stipulates that an appellant should expect a decision based on either "objections [which] are still outstanding" or "objections which arise against the amended claims" (see OJ 10/2008, 471).

3.2 However, these decisions and the Notice do not concern new objections against claims which were not amended as in the present case. Nor do they stipulate that a non-attending party has generally given up its right to be heard under Article 113(1) EPC.

3.3 On the contrary, it is established case law that a non-attending party's right to be heard under Article 113 (1) EPC must not be ignored (CLBoA, III.B.2.7).

3.4 This view is confirmed by analogy to Opinion G 4/92

(OJ EPO 1994, 149) of the Enlarged Board of Appeal. According to G 4/92 a decision against a party who has been duly summoned but who fails to appear at oral proceedings may not be based on facts put forward for the first time during those oral proceedings (see Conclusion of G 4/92). Although Opinion G 4/92 explicitly only concerns inter partes proceedings (see point 1 of the Reasons), the same principle has been applied in ex parte proceedings (see CLBoA, III.B.2.6.1 and III.B.2.7.1).

3.5 Consequently, the board agrees with the appellant that its right to be heard under Article 113(1) EPC has been infringed. This applies to the objection under Article 84 EPC and equally to the objections under Article 56 EPC based on D6 and common general knowledge. Hence, procedural violations occurred in the proceedings before the department of first instance.

3.6 The objections of lack of clarity and lack of inventive step relating to the main and auxiliary requests were decisive for the outcome of the decision to refuse the application. Hence, the procedural violations are substantial ones (see CLBoA, III.B.2.2.2).

3.7 According to Article 11 RPBA a board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise. The substantial procedural violations found constitute fundamental deficiencies in the meaning of Article 11 RPBA.

3.8 In the present case, the appellant did not request that the case be remitted. Moreover, concerning the issue of (lack of) novelty of the subject-matter of the independent claims of the main request over D6, the reasoning of both the examining division and the appellant had been presented during the written phase of the examination proceedings, so that the board is aware of the examining division's opinion on this issue. Furthermore, a remittal of the case would not have served procedural economy. In view of these special reasons, the board considered it appropriate to exercise its power according to Article 111(1) EPC in examining the appeal in substance.