Key points
- The ED refused the application. "The examining division noted as follows: "With respect to the so far missing summons to oral proceedings, as commented by the Applicant: Please note that it is the duty of the Applicant (not of three members of the European Patent Office) to fulfill the requirements of the EPC, to adapt the description appropriately and to provide an admissible and agreeable claim text which is adequate to provide remedy (with promise of success) and with which consensus can be achieved (Rule 137(3) EPC); a consensus (or at least an adequate approach) which is worth to spend the time and costs in oral proceedings. Please further note that oral proceedings increase the workload for three members of the Examining Division and not "reduce" it as supposed by the Applicant. Please further note that a proper amendment should be present as a first step for the Examining Division to do the next step, be it oral proceedings or to give consent. In such a case the Examining Division might be in the position to adequately and positively support the interests of the Applicant. Please further note that from the beginning, id est since the first amendments of the Applicant were submitted, the basic requirements of Article 123(2) were not met. Formulating an allowable claim text, also, is not the duty of an Examining Division."
- The applicant then withdrew the request for oral proceedings.
- The Board 3.2.06: "According to established case law the right to an oral hearing is an extremely important procedural right which the EPO should take all reasonable steps to safeguard (T 668/89, T 808/94, T 556/95, T 996/09, T 740/15). If a request for oral proceedings has been made, such proceedings have to be appointed. This provision is mandatory and leaves no room for discretion (T 283/88, T 795/91, T 556/95, T 1048/00, T 740/15), i.e. parties have an absolute right to oral proceedings. Considerations such as the speedy conduct of the proceedings, equity or procedural economy cannot take precedence over this right (cf. Case Law of the Boards of Appeal, 10th edition, III.C.2.1)."
- Obviously, the Legal Board may disagree, in view of the remarkable (and concerning) decision J 6/22, and it will be for the Enlarged Board in the pending petition for review R 16/23 against J6/22 to settle the matter.
- The present Board, politely it seems: "It should be noted in passing that a discussion of the recent decision J 6/22 does not appear necessary in the context of the present case, as this decision endorses, according to the understanding of the present Board, a restrictive interpretation of the right to oral proceedings for very specific procedural circumstances. However, a dynamic interpretation restricting explicitly regulated procedural rights of the parties does not seem to be considered in J 6/22 for the central area of the European grant procedure."
- " The reasoning contained in the contested decision (by reference to the communication of 25 January 2021, see point IX. above) is thus based on a manifestly incorrect understanding of the right to oral proceedings as enshrined in the EPC. The fact that oral proceedings cause costs is anyway no reason not to comply with the appellant's repeatedly expressed wish to hold oral proceedings. The reminder in the contested decision of the applicant's duty to submit an EPC-compliant version of the application documents is also no reason not to comply with a request for oral proceedings."
- " Nor is the repeated indication in the examining division's communications that amendments would not be admitted to the proceedings or had not been admitted under Article 137(3) EPC, so that no version of the application documents approved by the applicant would exist in the proceedings, a sound reason for not holding oral proceedings. Even if the examining division considered the possibility of not admitting amended application documents into the proceedings, oral proceedings would still have had to be held in the present case in order to discuss (at least) the question of (non-)admittance of the amendments with the applicant, which would have also comprised the issue of whether the objections raised by the examining division had been overcome by the amendments (see below point 1.4)."
- "The Board thus considers that withdrawal of the request for oral proceedings under these particular circumstances did not therefore absolve the examining division from its duty to hold the originally requested oral proceedings. In this context, it must also be taken into account that the examination procedure had already lasted several years and it is immediately recognisable that the appellant was given no other way out in order to obtain an appealable decision. "
- "In view of the overall course of the examination proceedings it is to be noted that although the appellant ultimately withdrew its request for oral proceedings and requested a decision on the state of the file, it was deprived of its right to be heard in oral proceedings as enshrined in Articles 113(1) and 116(1) EPC. Due to this substantial procedural violation, the contested decision had to be set aside."
- The case is remitted.
EPO
The link to the decision is provided after the jump, as well as (an extract of) the decision text.
source http://justpatentlaw.blogspot.com/2024/01/t-202421-right-to-oral-proceedings.html
