T 1550/21 - Too short notice of oral proceedings

Key points

• "The board holds that the examining division committed a substantial procedural violation by summoning the appellant to oral proceedings with less than two months of notice, without the appellant's agreement, contrary to Rule 115(1) EPC. The reasons are as follows."
• " A new summons was issued, dated 14 January 2021 and setting 27 January 2021 as the date for the oral proceedings. Four further prior-art documents, labelled as D5 to D8, were attached to the summons; the arguments in the accompanying communication were largely based on document D5."
• "When precisely the new summons was in fact dispatched to the appellant cannot be established with certainty from the file, although it appears highly plausible, in view of the indication in the EPO Form 2008 (bottom right corner) dated 14 January 2021 "to EPO postal service: 22.12.2020" that the summons was dispatched electronically on 22 December 2020. Even if, for the sake of argument and hypothetically, it were assumed that the re-issued summons was dispatched immediately after the first summons was cancelled on 19 November 2020, this would still be less than 10 days (Rule 126(2) or 127(2) EPC) and two months (Rule 115(1) EPC) before 27 January 2021, the date of the re-scheduled oral proceedings."
• As a comment, I think we should stick to the date the document bears, even if the document is post-dated, in view of legal certainty. The EPO is completely free to put the actual date on the document, so there is no reason to accommodate a practice of post-dating.
• "In the present case, the examining division exceptionally pursued a "shorter period". The onus of establishing that the appellant indeed agreed to deviate from the normal minimum notice was no doubt on the examining division (cf. T 111/95, Reasons 3)."
• ""6. As agreed with the Applicants during the telephone conversation to postpone the previous oral proceedings the date of these oral proceedings has been fixed within two months instead of the normal four months. For the same reason any submissions made prior to the oral proceedings shall be filed at latest 14 day before the date of the oral proceedings". Unfortunately, however, no minutes of this telephone conversation are available in the public file of the present application. This means that the date of the conversation, thereby also the starting point of the two months' period mentioned, cannot be established. "
• As a comment, I doubt if the applicant agreed to summons within two months from the alleged phone call instead of two months from the date of the summons.
•  I also doubt that this purported consent of the applicant extended to citing four new prior art documents in the summons. 
• " Nevertheless, in the overall assessment, the board finds a broken, non-chronological and inconsistent chain of events recorded in the public file which is unfit to establish that, at the time of the summoning to the oral proceedings to be held on 27 January 2021, there was a pending agreement with the appellant to a "shorter period" of notice than the regular minimum of two months. Those events can also not demonstrate retroactively the occurrence of such an agreement. In other words, the examining division has not fulfilled their onus as required for applying the exception provided in Rule 115(1) EPC. Lastly, it is noted that the decision under appeal does not at all address the procedurally highly important question of compliance with the provision of Rule 115(1) EPC."
• The impugend decision is set aside, the case remitted, and the appeal fee reimbursed. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 1564/18 - Oral proceedings Ex Div in absence

 Key points

•  The Board essentially finds the refusal decision to be an unallowable surprise decision. 
• The ED cited D6, fig. 3-8 as anticipating claim 1 in a Communication under Art. 94(3). In the summons to the oral proceedings, again Fig. 3-8 of D6 were cited. Oral proceedings were held in the absence of the applicant who had announced that they would not attend.
• In the refusal decision, Fig. 1 and 2 of D6 were cited as anticipating claim 1 of the main request. These figures are described as "conventional art" in D6.
• The Board: "As the appellant had decided not to be present at the oral proceedings, it had relied solely on its written arguments. In such a case, the appellant's right to be heard is not violated if the examining division raises new foreseeable objections against new subject-matter submitted before the oral proceedings, including citing different passages of a document for newly-introduced features. However, in the present case the board cannot recognise such a reason for changing the closest prior art to the disclosure of Figure 1 of document D6. The main request considered  in the decision under appeal did not differ significantly from the previous sole request on file (only the expression [feature omitted] had been added at the end of claim 1), and in its reasoning the examining division did not justify why it had relied on a different part of document D6."
  
• " the board concludes that neither the annex to the summons nor any of the previous communications of the examining division contained the essential legal and factual reasons leading to the finding in the appealed decision that claim 1 of the main request lacked novelty over the prior art cited for the first time to refuse the application." 
• As a comment, although the Board seems to have a point, I find it confusing that the Board refers to "changing the closest prior art to the disclosure of Figure 1 of document D6" even though the rejection of the main request was for lack of novelty. 
• The Board: "Moreover, it is not possible to establish from the decision under appeal whether or why the amendments made in advance of the oral proceedings held in absentia justified the change to a new closest prior art. The decision was therefore issued in violation of Article 113(1) EPC." 
• The basic thrust seems correct, but again it is unfortunate to refer to "new closest prior art" when talking about novelty. On the other hand, I'm not sure if there is established terminology for the "equivalent" of "the closest prior art"  under novelty.
• As a further comment, provided that amendments made just before the oral proceedings were the normal kind of narrowing claim amendments, the Examining Division could have cited figures 1 and 2 as novelty-destroying in addition to the alleged novelty destroying figures 3-8. In other words, for novelty, it's not so much a matter of "changing the closest prior art", but adding new novelty objections (based on Figures 1 and 2) possibly in combination with abandoning earlier novelty objections (based on Figures 3-8). 
• G 4/92 does not apply to ex parte cases. The EPO's current practice regarding applicants staying away from oral proceedings before the Examining Division is described in  OJ 2020 A124. Whether the present decision puts a gloss on that Notice, can be left as an exercise for the reader. I also note that the present decision does not cite Rule 115(2) EPC.
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EPO Headnote

Since neither the annex to the summons nor any of the previous communications of the examining division contained the essential legal and factual reasons leading to the finding in the appealed decision that claim 1 of the main request lacked novelty over the prior-art device considered for the first time in the novelty assessment of the refusal, and since no reason was given why the amendments made in advance of the oral proceedings held in absentia justified the change to this new closest prior art, the decision was issued in violation of the right to be heard even though the prior-art device on which the refusal was based was disclosed in the same document as a closest prior art considered previously in the examination procedure.