T 0763/15 - Not admitting AR without debate

Key points

• The OD did not admit an auxiliary requests. However, in doing so the right to be heard was violated. This is a substantial procedural violation. 
" In the present case, the board cannot see any indication that the appellant was allowed to argue during the oral proceedings on the issue of admissibility of the auxiliary request 2 filed in writing on 5 November 2014. "
• For this reason alone [] the board comes to the conclusion that the patentee's right to be heard had been violated. Although an effective and efficient conduct of oral proceedings is subject to the discretionary power exercised by the chairman in oral proceedings with regard to specific issues, it must nevertheless guarantee that the fundamental procedural rights of each party in adversarial proceedings, i.e. the right to a fair and equal treatment, including the right to present comments in oral proceedings are respected (Articles 113(1) and 116 EPC).

EPO T 0763/15 -  link

3. Alleged procedural violations

3.1 The appellant alleges that its interests in defending its case had been seriously damaged in opposition proceedings in several respects (alleged procedural violations 1 to 3). Allegedly, the decision not to admit e.g. the auxiliary request 2 filed in writing on 5 November 2014 into the opposition proceedings was taken without giving the patentee the opportunity to argue on its admissibility (alleged procedural violation 1), thus violating the party's fundamental right to be heard.

3.2 According to the established jurisprudence, the right of any party for oral proceedings to be held on request and to present its case orally is absolute and, with respect to the party's right to be heard on its case, a more specific embodiment of the general principle enshrined in Article 113(1) EPC. Moreover, the parties' absolute right to be heard in oral proceedings, Articles 113(1) and 116(1) EPC, is not restricted to new and substantial arguments which have not yet been presented in writing (see R 3/10, Reasons 2.11).

3.3 In the present case, the board cannot see any indication that the appellant was allowed to argue during the oral proceedings on the issue of admissibility of the auxiliary request 2 filed in writing on 5 November 2014. Without going into the merits of the case as regards the reasons for not admitting this request, according to the minutes (see point 7.) the chairman of the opposition division, after commenting on the amendment made to claim 1 of auxiliary request 2, immediately announced "that AUX2 is not admitted in the proceedings". As acknowledged by the respondent, a decision taken and pronounced by the opposition division cannot be challenged any more in the same proceedings. Therefore, it is considered irrelevant that "The Patentee did not react on this decision not to admit AUX2 in the proceedings", as recited in the minutes.

The respondent refers to point 3.2 of the contested decision ("As explained by the Proprietor, the feature ... has been added to claim 1 of the granted patent. This feature originates from ..."), allegedly proving that the patentee had the opportunity to be heard. However, the board cannot see that this passage, which rather relates to the submissions made in writing in the letter dated 5 November 2014 (and shows the basis for the amendment in the originally filed description), demonstrates that the patentee was given the right to present its case orally during the oral proceedings.

3.4 For this reason alone, irrespective of whether the allegations of further procedural violations 2 and 3 are acknowledged by the board, the board comes to the conclusion that the patentee's right to be heard had been violated. Although an effective and efficient conduct of oral proceedings is subject to the discretionary power exercised by the chairman in oral proceedings with regard to specific issues, it must nevertheless guarantee that the fundamental procedural rights of each party in adversarial proceedings, i.e. the right to a fair and equal treatment, including the right to present comments in oral proceedings are respected (Articles 113(1) and 116 EPC).

3.5 In addition, the board observes the following:

- It appears that the opposition division did not admit the second auxiliary request according to Rule 80 EPC, because it was considered not to be a limitation of the first auxiliary request and not an attempt to overcome the ground for opposition against auxiliary request 1. However, a limitation of the patent as granted which is an alternative to the limitation provided in a first auxiliary request might be an attempt to overcome a ground for opposition, irrespective of whether it limits the subject-matter of a first auxiliary request.

- It appears that the lack of clarity put forward by the opposition division against the new auxiliary requests 2 and 3 filed during oral proceedings was already present in requests already filed before, so the patentee was not given the opportunity to react correspondingly by way of amendment (alleged procedural violation 3).

4. Remittal

4.1 In view of the fundamental deficiency as found above, the board decides to remit the case to the opposition division (Article 111 EPC; Article 11 RPBA, Rules of Procedure of the Boards of Appeal, OJ EPO 2007, 536).

4.2 The respondent requested that the case should not be remitted because the second auxiliary request, which was not admitted by the opposition division, was not maintained any more in appeal proceedings. However, as pointed out by the appellant, this request was still there in substance in form of the first auxiliary request filed with the grounds of appeal, which was only amended by taking into account the further clarity objection raised during oral proceedings at a later stage against the new auxiliary request 2 filed during oral proceedings (see contested decision, point 5.2).

Moreover, a new issue was raised for the first time in appeal proceedings by the appellant with regard to paragraph [0028] of document E5, which might affect the discussion when coming to the assessment of inventive step of the subject-matter of the auxiliary requests on file. In fact, inventive step of the claimed subject-matter has not been discussed so far. Furthermore, the new first and second auxiliary requests filed by the appellant on 2 August 2017, allegedly an attempt to delimit the subject-matter claimed over E5 in this respect, might raise new issues to be discussed.

4.3 In view of the foregoing, the board finds it appropriate to follow the appellant's request to remit the case in order to give the appellant the appropriate opportunity to be heard on its arguments.

5. Reimbursement of the appeal fee

According to Rule 103(1)(a) EPC the reimbursement of the appeal fee is ordered where the board deems an appeal allowable, if such reimbursement is equitable by reason of a substantial procedural violation.

In the present case, the appeal is allowable and the substantial procedural violation acknowledged above concerns non-admission of the second auxiliary request filed on 5 November 2014, which forms the basis for filing a first auxiliary request with the grounds of appeal (taking into account further objection raised later in oral proceedings as stated above). Since the board confirms the contested decision as regards the appellant's main request, there is a self-evident causal link between the violation of the appellant's right to be heard and the necessity to appeal. Therefore, and in the absence of any grounds to the contrary, the reimbursement of the appeal fee is equitable.

Order

For these reasons it is decided that:

1. The impugned decision is set aside.

2. The case is remitted to the opposition division for further prosecution.

3. The appeal fee is to be reimbursed.