T 0233/18 - The meaning of grounds

 Key points

• In this examination appeal, the Examining Division had issued one communication raising objections under Article 123(2) and after the applicant's response, refused the application based on completely different Article 123(2) objections ‘without further ado’.
• The Board explains that this is a violation of Article 113(1) EPC (the right to be heard): “It thus appears that the Examining Division felt entitled to refuse the application under Article 123(2) EPC for the sole reason that it had previously raised an objection under that same legal provision. However, according to the established jurisprudence, the term "grounds or evidence" in Article 113(1) EPC should not be narrowly interpreted and has to be understood as referring to the legal and factual reasons leading to the refusal of the application, and not in the narrow sense of a (legal) requirement of the EPC (Case Law of the Boards of Appeal, 9th Edition, 2019, III.B.2.3.2; see in particular T 556/15, point 1.3.1 of the Reasons).”
• The foundational decision seems to be T951/92 but therein there had been no articulated reasons under Article 123(2) at all until the refusal decision.
• The present case is indeed similar to T0556/15 (in French).
• I think the phrase ‘legal and factual reasons’ interprets the term ‘grounds’ in Article 113(1) EPC rather than the term ‘evidence’.
• The term ‘grounds of opposition’ under G10/91 (no fresh grounds of opposition in appeal) is interpreted “in the narrow sense of a (legal) requirement of the EPC” (G1/95 and G7/95).

https://www.epo.org/law-practice/legal-texts/html/caselaw/2019/e/clr_iii_b_2_3_2.htm

https://www.epo.org/law-practice/case-law-appeals/recent/t920951ex1.html

https://www.epo.org/law-practice/case-law-appeals/recent/t180233eu1.html

2. During the examination proceedings, a single communication under Article 94(3) EPC (dated 20 January 2016) was issued. Therein, claim 1 (filed on 8 October 2009) was objected under Article 123(2) EPC with the following brief reasoning:

"Claim 1: there is no obvious basis for the replacement of the terms "(first/second) position" by the terms "(first/second) configuration"."

3. The applicant responded by filing amended replacement claims (received on 25 May 2016). Without further ado, the Examining Division refused the application for lack of compliance with Article 123(2) EPC based, however, on an entirely different reasoning  [as follows ...]

None of these reasons were mentioned in the brief reasoning given in the sole communication issued by the Examining Division (see point 2 above).

4. Hence, the applicant has not been given an opportunity to present its comments against the grounds on which the decision is based. A fortiori, the Examining Division could not duly consider the merit of such comments in the decision.

5. It is noteworthy that the Examining Division explicitly remarked in the decision (page 2, penultimate paragraph) that:

"In the office communication of 20-01-2016 under item 3, applicant's attention had been drawn to the fact that failure to meet the requirements of Art. 123(2) EPC will lead to the refusal of the Application."

It thus appears that the Examining Division felt entitled to refuse the application under Article 123(2) EPC for the sole reason that it had previously raised an objection under that same legal provision.

However, according to the established jurisprudence, the term "grounds or evidence" in Article 113(1) EPC should not be narrowly interpreted and has to be understood as referring to the legal and factual reasons leading to the refusal of the application, and not in the narrow sense of a (legal) requirement of the EPC (Case Law of the Boards of Appeal, 9th Edition, 2019, III.B.2.3.2; see in particular T 556/15, point 1.3.1 of the Reasons).

6. The infringement of the right to be heard is a substantial procedural violation justifying the reimbursement of the appeal fee under Rule 103(1)(a) EPC.

In accordance with Article 11 RPBA 2020, it is therefore appropriate to remit the case to the Examining Division for further prosecution.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

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

3. The appeal fee is reimbursed.