- “In the present case, the written decision does not provide the Examining Division's reasons for not admitting the second auxiliary request into the proceedings. As explained above, the written decision must give reasons for the rejection of each one of the requests, including those not admitted into the proceedings, in order to enable a judicial review []”
- “The minutes of the oral proceedings reproduce arguments given by members of the Examining Division for not admitting the second auxiliary request, but since the written decision does not endorse any of those arguments either by repeating them or by reference, they are not part of the final decision. Failing to justify in the written decision why a request was not admitted into the proceedings infringes Rule 111(2) EPC and amounts to a substantial procedural violation.”
- “Regarding the main request, the written reasoning of the decision under appeal consists essentially of text copied from the [preliminary opinion with three additional points]. (...) Thus, none of these three points deals with the applicant's arguments submitted after the summons to oral proceedings. Similarly, the reasoning for refusing the first auxiliary request does not address the applicant's arguments.”
- “In sum, the written reasoning of the decision under appeal does not deal with any of the arguments that the applicant submitted at the oral proceedings and in its letter dated 20 July 2015 in reply to the summons.”
- This is a substantial procedural violation. The appeal fee is reimbursed even though the main request and first auxiliary request are not allowable; the case is remitted for the second auxiliary request.
EPO T 1029/16 - link
9.5 Therefore, the Board is satisfied that independent claims 1 and 5 of the third auxiliary request fulfil the requirements of Articles 84 and 123(2) EPC.
Procedural violation
10. In its statement of grounds of appeal, the appellant requested reimbursement of the appeal fee by reason of a substantial procedural violation since the applicant's right to be heard had not been observed. The written reasoning of the decision under appeal did not seem to deal with the arguments put forward by the applicant during the oral proceedings.
[applicant's arguments]
At the oral proceedings, the appellant also argued that the long prosecution time in the present case amounted to a procedural violation.
10.1 According to Rule 111(2) EPC, decisions of the EPO open to appeal must be reasoned. As explained in decision T 679/14 of 19 January 2017, reasons 14, the case law of the Boards of Appeal establishes criteria for substantiating the reasons for decisions (see also Guidelines for Examination, E-X, 1 to 2.11). The reasoning has to enable the appellants and the board of appeal to examine whether the decision was justified or not. A written decision should discuss in detail the facts, evidence and arguments which are essential to the decision, and has to contain the logical chain of reasoning which led to the relevant conclusion. It should be complete and self-contained (T 1123/04, reasons 3.3; T 353/11, reasons 2.3; T 2366/11, reasons 1; T 679/14, reasons 14.1,). If a decision relates to several requests, it must give reasons for the rejection of each one, whether it is unallowable or inadmissible (T 234/86, OJ EPO 1989, 79, reasons 5.10; T 169/96 of 30 July 1996, reasons 4; T 1105/96, OJ EPO 1998, 249, reasons 1).
Whereas the reasons of a decision may, in the interest of procedural economy, refer in appropriate cases to previous communications, it must be clear from the decision which considerations led the Division to its conclusions (T 234/86, reasons 5.10). The fact that preliminary opinions or arguments which may be applicable to these requests have been expressed in previous communications or in the minutes of oral proceedings cannot replace reasons in the decision itself.
Moreover, the right to be heard under Article 113(1) EPC encompasses the right of a party to have its comments considered in the written decision (T 763/04 of 22 June 2007, reasons 4.3 and 4.4; T 852/07, reasons 2.2; T 1961/13 of 16 September 2014, reasons 4). Although a decision does not have to address each and every argument of a party in detail, it must comment on the crucial points of dispute in order to give the losing party a fair idea of why its submissions were not considered convincing (see decision T 1557/07 of 9 July 2008, reasons 2.6; T 1961/13, reasons 4.1).
10.2 In the present case, the written decision does not provide the Examining Division's reasons for not admitting the second auxiliary request into the proceedings. As explained above, the written decision must give reasons for the rejection of each one of the requests, including those not admitted into the proceedings, in order to enable a judicial review (see also Guidelines for Examination, E-X, 2.11). The minutes of the oral proceedings reproduce arguments given by members of the Examining Division for not admitting the second auxiliary request, but since the written decision does not endorse any of those arguments either by repeating them or by reference, they are not part of the final decision. Failing to justify in the written decision why a request was not admitted into the proceedings infringes Rule 111(2) EPC and amounts to a substantial procedural violation.
10.3 Regarding the main request, the written reasoning of the decision under appeal consists essentially of text copied from the communication accompanying the summons to oral proceedings and three paragraphs of new text, namely points 1.2.3, 1.2.4, and 1.3.5. In points 1.2.3 and 1.2.4 the Examining Division raises clarity objections against further claim expressions, and point 1.3.5 reads "A summary of the above, data is exchanged between systems but no further effect other than exchange of data is achieved". Thus, none of these three points deals with the applicant's arguments submitted after the summons to oral proceedings.
Similarly, the reasoning for refusing the first auxiliary request does not address the applicant's arguments.
In sum, the written reasoning of the decision under appeal does not deal with any of the arguments that the applicant submitted at the oral proceedings and in its letter dated 20 July 2015 in reply to the summons.
The Examining Division does not have to address every argument of the applicant in detail, but it must comment on the crucial points of dispute.
10.3.1 In the present case, the Examining Division should have addressed the applicant's statements regarding the invention and its advantages reproduced in the minutes of the oral proceedings (page 1, seventh line from bottom to page 2, sixth line), according to which the invention had an impact on network usage. This argument is relevant for the question of whether the invention contributes to a technical effect and, consequently, for inventive step.
10.3.2 According to the minutes, at the oral proceedings before the Examining Division the applicant further argued that document D1 focused on the creation of data, that the system of D1 always sent the same web form and did not allow for choice of content, and that document D1 pointed away from the invention (see page 2, sixth full paragraph). These arguments were not addressed by the Examining Division.
10.4 In the light of the foregoing, the Board agrees with the appellant that its right to be heard was not observed by the Examining Division, contrary to the requirements of Article 113(1) EPC, and that the decision under appeal was not sufficiently reasoned, in infringement of Rule 111(2) EPC. Those deficiencies amount to a substantial procedural violation.
11. In view of the outcome of the present appeal given below, the Board does not have to decide whether, as argued by the appellant, the long duration of the proceedings before the Examining Division also constituted a substantial procedural violation.
Remittal and reimbursement of the appeal fee
12. The main request and the first and second auxiliary requests are not allowable.
With respect to the third auxiliary request, the independent claims fulfil the requirements of Articles 84 and 123(2) EPC. For the reasons given in point 8.4 above, the Board does not have a basis for assessing inventive step.
13. Under these circumstances, the Board finds it appropriate to remit the case to the department of first instance for further prosecution pursuant to Article 11 RPBA. Given the long duration of the proceedings thus far, the remitted case should be dealt with expeditiously.
14. According to the established case law, the infringement of the right to be heard and the failure to provide adequate reasoning in a decision are normally considered to be substantial procedural violations justifying the reimbursement of the appeal fee (see Case Law of the Boards of Appeal, 9th edition 2019, V.A.9.5.8 and 9.5.9).
In the present case, the appellant had to appeal in order to assert its rights to be heard and to be informed of the full reasons for rejecting its requests. In view of the deficient reasoning of the decision under appeal, the Board was not in a position to take into account the grounds for not admitting the then second auxiliary request nor to assess inventive step with regard to the third auxiliary request.
Due to the need to remit the case as a consequence of the Examining Division's procedural violation, the appellant may need to pay a further appeal fee.
Therefore, the Board finds it appropriate to order the reimbursement of the appeal fee in accordance with Rule 103(1)(a) EPC.
The appellant argued that according to well-established case law, as could be derived from decisions T 1123/04 of 25 August 2006 and T 852/07 of 25 January 2008, as well as the EPO Guidelines for Examination, the right to be heard was a right to not just present comments but also have those comments duly considered.
In the present case, the decision in respect of the main request seemed to be copied from the summons to oral proceedings dated 8 April 2015. The only three paragraphs concerning the main request which had not been directly copied appeared to be a paraphrased version of what had been said in the summons.
In its written submissions, the applicant had already replied to the arguments raised in the summons. It was hence not clear whether and how the applicant's reply had been considered by the Examining Division.
Hence, the Examining Division had failed to provide adequate reasoning in the decision, contrary to Rule 111 (2) EPC. This was also a substantial procedural violation, as noted by well-established case law including T 353/11 of 16 May 2012, and T 2366/11 of 26 March 2012.
Furthermore, it was clear that the decision had very little in common with what had actually been discussed at the oral proceedings. As was clear from page 1 of the minutes, all of the objections raised by the Examining Division related to determining the technical effect of particular features of the claims and the technical problem that the invention solved. In response to this, the applicant summarised the invention as defined by the claims as well as the objective technical problem solved by the invention. However, it was not clear from the decision how any aspect of this discussion had any correlation whatsoever with the decision, which appeared to have been at least partly (if not entirely) made based on issues that were not discussed at the oral proceedings.
The appellant gave examples of concrete arguments submitted in advance of the oral proceedings with its letter dated 20 July 2015 which allegedly had not been addressed by the Examining Division.
At the oral proceedings, the appellant also argued that the long prosecution time in the present case amounted to a procedural violation.
10.1 According to Rule 111(2) EPC, decisions of the EPO open to appeal must be reasoned. As explained in decision T 679/14 of 19 January 2017, reasons 14, the case law of the Boards of Appeal establishes criteria for substantiating the reasons for decisions (see also Guidelines for Examination, E-X, 1 to 2.11). The reasoning has to enable the appellants and the board of appeal to examine whether the decision was justified or not. A written decision should discuss in detail the facts, evidence and arguments which are essential to the decision, and has to contain the logical chain of reasoning which led to the relevant conclusion. It should be complete and self-contained (T 1123/04, reasons 3.3; T 353/11, reasons 2.3; T 2366/11, reasons 1; T 679/14, reasons 14.1,). If a decision relates to several requests, it must give reasons for the rejection of each one, whether it is unallowable or inadmissible (T 234/86, OJ EPO 1989, 79, reasons 5.10; T 169/96 of 30 July 1996, reasons 4; T 1105/96, OJ EPO 1998, 249, reasons 1).
Whereas the reasons of a decision may, in the interest of procedural economy, refer in appropriate cases to previous communications, it must be clear from the decision which considerations led the Division to its conclusions (T 234/86, reasons 5.10). The fact that preliminary opinions or arguments which may be applicable to these requests have been expressed in previous communications or in the minutes of oral proceedings cannot replace reasons in the decision itself.
Moreover, the right to be heard under Article 113(1) EPC encompasses the right of a party to have its comments considered in the written decision (T 763/04 of 22 June 2007, reasons 4.3 and 4.4; T 852/07, reasons 2.2; T 1961/13 of 16 September 2014, reasons 4). Although a decision does not have to address each and every argument of a party in detail, it must comment on the crucial points of dispute in order to give the losing party a fair idea of why its submissions were not considered convincing (see decision T 1557/07 of 9 July 2008, reasons 2.6; T 1961/13, reasons 4.1).
10.2 In the present case, the written decision does not provide the Examining Division's reasons for not admitting the second auxiliary request into the proceedings. As explained above, the written decision must give reasons for the rejection of each one of the requests, including those not admitted into the proceedings, in order to enable a judicial review (see also Guidelines for Examination, E-X, 2.11). The minutes of the oral proceedings reproduce arguments given by members of the Examining Division for not admitting the second auxiliary request, but since the written decision does not endorse any of those arguments either by repeating them or by reference, they are not part of the final decision. Failing to justify in the written decision why a request was not admitted into the proceedings infringes Rule 111(2) EPC and amounts to a substantial procedural violation.
10.3 Regarding the main request, the written reasoning of the decision under appeal consists essentially of text copied from the communication accompanying the summons to oral proceedings and three paragraphs of new text, namely points 1.2.3, 1.2.4, and 1.3.5. In points 1.2.3 and 1.2.4 the Examining Division raises clarity objections against further claim expressions, and point 1.3.5 reads "A summary of the above, data is exchanged between systems but no further effect other than exchange of data is achieved". Thus, none of these three points deals with the applicant's arguments submitted after the summons to oral proceedings.
Similarly, the reasoning for refusing the first auxiliary request does not address the applicant's arguments.
In sum, the written reasoning of the decision under appeal does not deal with any of the arguments that the applicant submitted at the oral proceedings and in its letter dated 20 July 2015 in reply to the summons.
The Examining Division does not have to address every argument of the applicant in detail, but it must comment on the crucial points of dispute.
10.3.1 In the present case, the Examining Division should have addressed the applicant's statements regarding the invention and its advantages reproduced in the minutes of the oral proceedings (page 1, seventh line from bottom to page 2, sixth line), according to which the invention had an impact on network usage. This argument is relevant for the question of whether the invention contributes to a technical effect and, consequently, for inventive step.
10.3.2 According to the minutes, at the oral proceedings before the Examining Division the applicant further argued that document D1 focused on the creation of data, that the system of D1 always sent the same web form and did not allow for choice of content, and that document D1 pointed away from the invention (see page 2, sixth full paragraph). These arguments were not addressed by the Examining Division.
10.4 In the light of the foregoing, the Board agrees with the appellant that its right to be heard was not observed by the Examining Division, contrary to the requirements of Article 113(1) EPC, and that the decision under appeal was not sufficiently reasoned, in infringement of Rule 111(2) EPC. Those deficiencies amount to a substantial procedural violation.
11. In view of the outcome of the present appeal given below, the Board does not have to decide whether, as argued by the appellant, the long duration of the proceedings before the Examining Division also constituted a substantial procedural violation.
Remittal and reimbursement of the appeal fee
12. The main request and the first and second auxiliary requests are not allowable.
With respect to the third auxiliary request, the independent claims fulfil the requirements of Articles 84 and 123(2) EPC. For the reasons given in point 8.4 above, the Board does not have a basis for assessing inventive step.
13. Under these circumstances, the Board finds it appropriate to remit the case to the department of first instance for further prosecution pursuant to Article 11 RPBA. Given the long duration of the proceedings thus far, the remitted case should be dealt with expeditiously.
14. According to the established case law, the infringement of the right to be heard and the failure to provide adequate reasoning in a decision are normally considered to be substantial procedural violations justifying the reimbursement of the appeal fee (see Case Law of the Boards of Appeal, 9th edition 2019, V.A.9.5.8 and 9.5.9).
In the present case, the appellant had to appeal in order to assert its rights to be heard and to be informed of the full reasons for rejecting its requests. In view of the deficient reasoning of the decision under appeal, the Board was not in a position to take into account the grounds for not admitting the then second auxiliary request nor to assess inventive step with regard to the third auxiliary request.
Due to the need to remit the case as a consequence of the Examining Division's procedural violation, the appellant may need to pay a further appeal fee.
Therefore, the Board finds it appropriate to order the reimbursement of the appeal fee 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 department of first instance for further prosecution.
3. The appeal fee is to be reimbursed.
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