T 1401/16 - Wikipedia and right to be heard

Key point

• This is an examination appeal.
• " The board notes that the examining division bases its conclusions on these critical issues [i.e. inventive step], at least in part, on two Wikipedia entries cited in the decision. However, this evidence was never referred to during the examination proceedings and both entries are mentioned for the very first time in the appealed decision itself. In consequence, the applicant had no opportunity to present their comments in that respect. This constitutes a violation of the provisions of Article 113(1) EPC." 

EPO T 1401/16 -  link

Reasons for the Decision

1. Alleged violation of the right to be heard

1.1 The right of parties to a fair trial is a generally recognised procedural principle under Article 125 EPC, and to be observed in all proceedings before the European Patent Office. The predictability and verifiability of all state actions are indispensable elements of the rule of law and the respect of fundamental procedural rights. The right to be heard under Article 113 EPC is an embodiment of these fundamental principles. Under Article 113(1) EPC the ratio decidendi of decisions by 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. This also applies to evidence related to establishing the skilled person's common general knowledge (see for example R 12/12, Reasons 2).

Moreover, the right to be heard under Article 113(1) EPC requires that those involved be given an oppor­tu­nity not only to present comments (on the facts and considerations pertinent to the decision) 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 hear and consider the comments. It has to be clear from the reasons that the substance of their core arguments has been addressed in arriving at the decision.

A decision which is based on a ground on which the party had no opportunity to present their comments and/or which fails to take into account the arguments submitted by a party, contravenes Article 113(1) EPC and constitutes a substantial procedural violation (see Case Law of the Boards of Appeal of the European Patent Office, 8th edition 2016, III.B.2.4.1).

1.2 In the case at hand, the question of inventive step of the subject-matter of claim 1 of all requests on file essentially hinges on

- whether or not the feature "wherein the energising band is flexible such that it can be deformed during installation in the elastomeric component and is adapted to fit in the aperture of the elastomeric component such that, in use, the energising band applies a sealing force to the elastomeric component" was disclosed in document D1 and on
- whether or not the proposed choice of materials for the energising band was obvious for a person skilled in the art at the relevant date of the application.

The board notes that the examining division bases its conclusions on these critical issues, at least in part, on two Wikipedia entries cited in the decision. However, this evidence was never referred to during the examination proceedings and both entries are mentioned for the very first time in the appealed decision itself. In consequence, the applicant had no opportunity to present their comments in that respect. This constitutes a violation of the provisions of Article 113(1) EPC.

1.3 In addition, in the letter dated 11 January 2016 (cf. page 2, penultimate paragraph) the appellant inter alia argued that materials such as polysulfones were known to be soluble in solvents, such as those that may be found in the use of the seals of the present applica­tion. In this regard, reference was made to page 479 of document E4, which was annexed to the appellant's letter. The appellant further submitted that, in view this information, it would be counter-intuitive, and indeed surprising, that materials that were less resistant to solvents were used in the seal assemblies of the present claims. Consequently, the subject-matter of the present claims had to be considered inventive.

In the contested decision (cf. page 5, point 1), the examining division, based on a Wikipedia entry, essentially held that polysufones were rigid and of high dimensional stability. Although not explicitly stated, it appears that, for this reason, it considered polysulfone to be an obvious choice for the rigid plastic ring of document D1 (cf. column 4, lines 18 and 19). However, the decision under appeal does not address the appellant's above argument based on document E4 that the reduced resistance to solvents would lead to the skilled person away from using polysulfone as a material for the seal assembly of the present claims. The fact that the examining division did not verifiably take into account this argument submitted by the appellant on a crucial aspect of the present case constitutes a further violation of the appellant's right to be heard.

1.4 The board concludes that the examining division did not respect the provisions of Article 113(1) EPC when taking the decision under appeal. This amounts to a substantial procedural violation in the sense of Rule 103(1)(a) EPC.

2. Remittal of the case

2.1 Article 11 of the Rules of Procedure of the Boards of Appeal (RPBA) provides that a case shall be remitted to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise.

2.2 No such reasons are apparent in the present case. On the contrary, the appellant as the party concerned by the procedural violation explicitly requests the remittal of the case. In addition, it would appear appropriate for the examining division to explicitly establish what belongs to the state of the art and the skilled person's common general knowledge at the relevant date of the appli­ca­tion before drawing any conclusions concerning the question of inventive step, duly taking into account the applicant's case and preferably using the problem-solution approach.

The board thus exercises its discretion under Article 111(1) EPC and Article 11 RPBA to set the decision aside and remit the case to the examining division for further prosecution.

3. Reimbursement of the appeal fee

Since the decision is set aside and in view of the serious procedural violation established in point 1 above, the appeal fee is to be reimbursed in accordance with Rule 103(1)(a) EPC.

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 request for reimbursement of the appeal fee is allowed.