T 1674/16 - Taken by surprise by the ED

Key points

• In this examination appeal, the Board finds a substantial procedural violation. In the summons for oral proceedings before the ED, claim 8 was objected to for lack of inventive step. In a response filed 10 months before the oral proceedings. The oral proceedings were maintained,  the applicant did not attend them. The application was refused for lack of novelty over an (already cited) document.
• The Board does not approve of this. " In the more than 10 months that elapsed between the timely receipt of the amended claims and the date planned for the oral proceedings, the Examining Division's only reaction to those claims was a brief communication informing the appellant that the date fixed for oral proceedings remained unchanged. No further objections were raised, even after the appellant had said it would not be attending the oral proceedings. Under these circumstances the appellant could not have reasonably expected that a new objection of lack of novelty against the then pending claim 1 would be raised, either during oral proceedings held in its absence or, for the first time, in the written decision. Rather, this new objection caught it completely by surprise and deprived it of any opportunity to comment on the ground for the refusal of the application, in contravention of Article 113(1) EPC. This constitutes a substantial procedural violation."
• The Board also doubts whether oral proceedings actually took place. "The Board also notes that, [] there is nothing in the file to indicate whether these oral proceedings really took place. In particular, there are neither minutes according to Rule 124(1) EPC nor is there any reference to those oral proceedings in the impugned decision. This amounts to a further procedural violation, as it prejudices the necessary transparency of examination proceedings before the EPO." 

 EPO T 1674/16 -  link

Reasons for the Decision

1. The appeal is admissible.

2. As the appellant argued, the subject-matter of claim 1 of the claims labelled "Main Request", which corresponds to claim 1 of the request on which the impugned decision was based, comprises the features of claims 1 and 8 pending when the Examining Division issued the summons to oral proceedings.

3. Before issuing the impugned decision, the Examining Division had raised only an objection of lack of inventive step against that claim 8, under point 4 of the communication accompanying the summons, which reads:

"4. As regards the additional features of claim 8, they are considered conventional in the context of surgical forceps, as exemplified by Dl (US2007/173814), fig.1A, § [0063] or D2 (US2007/213708), fig.1A and §[0053] thereof. A modification of the D5 apparatus so as to employ a single movable handle is obvious for the one skilled in the art and will be carried out according to requirements and preferences. Claim 8 thus lacks an inventive step in view of D5 and Dl or D5 and D2 and, therefore is not patentable under Art.52(1) EPC."

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

In the impugned decision the Examining Division refused the application on the sole ground that claim 1 of the appellant's request filed in response to the summons lacked novelty over D5. It was the first time that that objection had been raised and reasons for it given, and the appellant had not had the opportunity to comment on it.

The Board notes that the Examining Division explicitly informed the appellant that a decision would "be taken at oral proceedings" (point 5 of the communication accompanying the summons). It further notes that it was the appellant's own choice, communicated by letter dated 1 February 2016, not to attend them. However, it is also to be considered that, in response to the summons, the appellant filed amended claims well before the deadline for written submissions set by the Examining Division under Rule 116(1) EPC (point 5 of the communication accompanying the summons).

In the more than 10 months that elapsed between the timely receipt of the amended claims and the date planned for the oral proceedings, the Examining Division's only reaction to those claims was a brief communication informing the appellant that the date fixed for oral proceedings remained unchanged. No further objections were raised, even after the appellant had said it would not be attending the oral proceedings.

Under these circumstances the appellant could not have reasonably expected that a new objection of lack of novelty against the then pending claim 1 would be raised, either during oral proceedings held in its absence or, for the first time, in the written decision. Rather, this new objection caught it completely by surprise and deprived it of any opportunity to comment on the ground for the refusal of the application, in contravention of Article 113(1) EPC. This constitutes a substantial procedural violation.

For this reason, in accordance with Article 111(1) EPC, the case is remitted to the Examining Division for further examination, in particular of the claims labelled "Main Request" filed with the statement of grounds.

5. The Board also notes that, although the Examining Division expressly confirmed the date fixed for oral proceedings by a communication sent just two days before them, there is nothing in the file to indicate whether these oral proceedings really took place. In particular, there are neither minutes according to Rule 124(1) EPC nor is there any reference to those oral proceedings in the impugned decision. This amounts to a further procedural violation, as it prejudices the necessary transparency of examination proceedings before the EPO.

6. Under Rule 103(1)(a) EPC "the appeal fee shall be reimbursed in full [...] where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation".

As explained above, the Board allows the appellant's main (procedural) request in substance. Hence, the appeal is allowable.

Issuing the impugned decision in contravention of Article 113(1) EPC constituted a substantial procedural violation which has forced the appellant to appeal in order to have its rights respected (as is provided for in the EPC). It follows that reimbursement of the appeal fee is equitable and the appellant's request to this effect should be granted.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.

3. The appeal fee is to be reimbursed.