T 1423/13 - Legitimate expectations protected

Key points

• In a Communication, the ED had said that " the next office action will be the summons to oral proceedings" if no allowable set of claims was presented. The applicant filed amended claims. The ED then refused the application, without oral proceedings. These were not requested by the applicant.
• The Board: "[The] statement by the Examining Division was a source of legitimate expectation for the Applicant. In the present case, the violation of this principle led to the decision to refuse the application, which came as a surprise to the Applicant." 
• "Having given that impression [that oral proceedings would be held], the Examining Division, by issuing the decision to refuse the application without summoning the Applicant to oral proceedings, took the Applicant by surprise, thereby depriving it of a further opportunity to present arguments or its final fall back positions. The applicant was thus denied its right to be heard."

EPO T 1423/13 - link

Reasons for the Decision

1. The present decision only concerns the question whether the refusal of the application was the consequence of a substantial procedural violation warranting the remittal of the case and the reimbursement of the appeal fee.

2. Procedural violation

2.1 According to Article 116(1) EPC, "Oral proceedings shall take place either at the instance of the European Patent Office if it considers this to be expedient or at the request of any party to the proceedings" (emphasis added by the Board).

2.2 For the Board, the wording of the statement of the Examining Division in its communication dated 11 May 2012 that "... in case no allowable set of claims is presented, the next office action will be the summons to oral proceedings ..." (emphasis added by the Board) is perfectly clear per se. It unambiguously implies that the Examining Division considered an oral hearing "at the instance of the EPO" to be expedient under the conditions expressly identified, i.e. "in case no allowable set of claims is presented".

2.3 Between the issuance of said communication and of the decision to refuse the application, the Examining Division neither withdrew nor rectified said statement, e.g. in order to inform or warn the Applicant that its application might be refused even without holding oral proceedings, as previously deemed expedient if no allowable claims were filed.

2.4 The considerations of the Examining Division (decision under appeal, paragraph bridging pages 2 and 3) based on what happened in the prosecution of the parent application are of no relevance, in particular since such considerations had already been verbalised in the very same communication dated 11 May 2012 (see section under the heading "Article 56 EPC") which contains the final indication "... in case no allowable set of claims is presented, the next office action will be the summons to oral proceedings ...".

2.5 For the Board, this statement by the Examining Division was a source of legitimate expectation for the Applicant. In the present case, the violation of this principle led to the decision to refuse the application, which came as a surprise to the Applicant.

More particularly, in the communication of 11 May 2012, the Examining Division had given the clear impression that if no allowable claims were filed, no decision negatively affecting the Applicant would be taking without beforehand summoning the Applicant to oral proceedings.

2.6 Having given that impression, the Examining Division, by issuing the decision to refuse the application without summoning the Applicant to oral proceedings, took the Applicant by surprise, thereby depriving it of a further opportunity to present arguments or its final fall back positions.

The applicant was thus denied its right to be heard (see also, for instance, decisions T 611/01 of 23 August 2004, Reasons, 5.2 to 6, and T 849/03 of 19 August 2004, Reasons).

2.7 In the Board's judgement, this course of action amounts to a substantial procedural violation.

3. Consequences

3.1 Request for remittal

3.1.1 Article 11 RPBA stipulates that "a Board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reason present themselves for doing otherwise".

3.1.2 Considering the circumstances of the present case, the Board sees no such "special reasons" possibly justifying not to remit the case. Moreover, remittal was expressly requested by the Appellant.

3.2 Reimbursement of the appeal fee

Considering that the Board deems the appeal to be allowable, the reimbursement of the appeal fee pursuant to Rule 103(1)(a) EPC is equitable by reason of the substantial procedural violation occurred.

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 appeal fee is to be reimbursed.