T 1567/17 – an unclear waiver is no waiver
In this case, the examining division issued a direct refusal after the appellant
had rejected the text intended for grant and requested that examination be
resumed based on reasoned amendments. The new main claim incorporated an amended
feature which, according to appellant’s own statement, “could be omitted if
regarded as violating Art. 123(2)”. The examining division indeed regarded the
amended feature as a violation, and interpreted the appellant’s statement as an
acknowledgement that the amendment could not be unambiguously derived from the
description as filed. The appellant was given no opportunity to respond to the
division’s opinion on this issue.
The
Board held that the
direct refusal of the application was in violation of Art. 113(1) EPC, since
the appellant’s statement could not be construed as waiving
the right to be heard, but merely intimated that a new R. 71(3) communication
would have been accepted on the basis of amended claims without the feature in
question.
Only an unambiguous statement
as to waiving a party's right to be heard is to be interpreted as a waiver of this right.
Catchwords: |
The applicant's remark in a response under Rule 71(6) EPC that an amended feature "can also be omitted if regarded as violating Article 123(2) EPC" cannot be construed as waiving its right to be heard and its right to a reasoned decision in case the application were to be refused. Rather, this remark merely intimates that the applicant would accept the issue of a new communication under Rule 71(3) EPC on the basis of the amended set of claims without said feature.
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VIII. The appellant's arguments, as far as they are
relevant to the present decision, may be summarised as follows:
The idea behind Rule 71(3) EPC was that an applicant
could re-enter the examination proceedings if it did not agree with the
proposed claims. In the present case, the claims filed by the appellant after
the examining division's communication under Rule 71(3) EPC had not been part
of the previous proceedings. However, the examining division rejected the new
claims without giving the appellant a further possibility to respond to its
arguments. As a consequence, the appellant's right to be heard according to
Articles 125 and 113(1) EPC had been violated.
Reasons for the Decision
1. Admissibility of the appeal
1.1 In a situation such as the present case in
which the request filed in the appeal proceedings does not expressly identify
the subject of the appeal and the extent to which the decision is to be amended,
as required by Rule 99(1)(c),(2) EPC, the latter can be ascertained from the
appellant's overall submissions (see T 727/91, Reasons 1; T 273/92, Reasons 1).
1.2 On the one hand, the appellant stated in its
notice of appeal that it contested the impugned decision as a whole. On the
other hand, in its statement of grounds of appeal it defined its auxiliary
request by appending the corresponding set of claims to the statement of
grounds of appeal and by explaining that the term "continuous" in
claims 1, 8, 11 and 16 was deleted, without expressly citing the original basis
from which it had deleted said term. However, it is evident from the file that
the feature "continuous bands" was first introduced by the appellant
in the set of claims filed with letter of 22 February 2017 and that in the
claims of the auxiliary request the word "continuous" has been
deleted from the claims filed with the letter dated 22 February 2017.
1.3 Therefore, although the appellant did not
explicitly state the content of its main request, it is clear that it requested
the board to set the decision under appeal aside and to grant a patent on the
basis of the documents of the European patent application to which the decision
under appeal referred, in particular the set of claims 1 to 18 filed with
letter of 22 February 2017.
1.4 Since the appeal also complies with the further
requirements of Articles 106 to 108 and Rule 99 EPC, it is admissible.
2. Substantial procedural violation - violation of
the right to be heard
2.1 After the examining division's communication
under Rule 71(3) EPC, the appellant under Rule 71(6) EPC did not approve the
communicated text and requested reasoned amendments to it. In this situation,
if the examining division does not give its consent to the amendments
requested, Rule 71(6), second half-sentence, EPC stipulates that "it shall
resume the examination proceedings". This consequence is an embodiment of the
fundamental principle of the right to be heard laid down in Article 113(1) EPC,
according to which decisions of the EPO may only be based on grounds on which
the parties concerned have had an opportunity to present their comments (see
also T 1066/96, Reasons 2.2 and 3.2, regarding the previous provision in Rule
51(6) EPC 1973: "If the Examining Division does not consent to an
amendment or correction requested under paragraph 5, it shall, before taking a
decision, give the applicant an opportunity to submit, within a period to be
specified, his observations ...").
2.2 As pointed out in the preparatory documents for
amendments to the Implementing Regulations to the EPC - Rule 71 EPC (see e.g.
document CA/PL 7/10 dated 6 May 2010, point 40) and as set out in the Guidelines
for Examination in the European Patent Office, November 2016, Chapter C-V
4.7.1, the actual next step of "resuming" the examination proceedings
under Rule 71(6), second half-sentence, EPC will depend on the circumstances of
the individual case. It may be a communication under Article 94(3) EPC and Rule
71(1),(2) EPC or, if the applicant's response was combined with a request for
oral proceedings or where considered expedient by the examining division, it
may be a summons to oral proceedings. Where the applicant states that it wishes
to have an appealable decision or where it wishes to maintain a higher-ranking
request, as an exception, the application may also be directly refused. In the
latter case the right to be heard (Article 113(1) EPC) is respected because the
grounds and evidence behind the non-allowance of the request filed in response
to the communication under Rule 71(3) EPC had already been dealt with in the
examination proceedings (see also Guidelines for Examination in the European
Patent Office, November 2016, Chapter C-V 4.7.1, last paragraph, letter (a)).
2.3 In the present case, the examining division
after the appellant's response of 22 February 2017 directly refused the
application. It therefore has to be determined whether the above-mentioned
requirements for this exceptional course of action were fulfilled, thereby
respecting the appellant's right to be heard.
2.3.1 As the first reason for the application's
refusal, the examining division argued that the amendment of the new feature
"continuous bands" did not prima facie meet the requirements of
Article 123(2) EPC because, "as already understood by the applicant"
and in agreement "with the concerns of the applicant", it could not
be unambiguously derived from the description as originally filed, in
particular not at the place cited by the appellant. The examining division
provided no further observations.
(a) Since this newly introduced feature had clearly
not yet been the subject-matter of the previous proceedings, the appellant did
not have an opportunity to present its comments on the examining division's
opinion.
However, in this regard it must additionally be
taken into account that the appellant in its letter of 22 February 2017 stated
that the feature at issue "can also be omitted if regarded as violating
Art 123(2)EPC". If this statement were to be construed as waiving the
appellant's right to be heard under Article 113(1) EPC, the examining
division's course of action would exceptionally not have involved a
corresponding violation. However, as was emphasized by the Enlarged Board of
Appeal in decision G 1/88, OJ EPO 1989, 189, Reasons 2.4, surrender of a right
cannot be simply presumed (a jure nemo recedere praesumitur; see also T 685/98,
OJ EPO 1999, 346, Reasons 3.3). Hence, in unclear
cases where there is no unambiguous statement as to waiving a party's right to
be heard, a corresponding interpretation with such major consequences to the
detriment of the party must be discarded.
In the present case, the appellant did not explicitly
declare that it would accept an immediate (negative) decision on its request
without a preceding opportunity to be heard on this issue. Rather, from its
statement it can only be concluded that it would not pursue a claim version
including the disputed feature if the examining division, apart from that
feature, were willing to grant a patent with the current set of claims. In
other words, the appellant merely intimated that it would accept the issue of a
new communication under Rule 71(3) EPC on the basis of the amended set of
claims without said feature.
As a result, the examining division could not
directly take its decision after the appellant's response under Rule 71(6) EPC
without contravening Article 113(1) EPC.
(b) Moreover, it is noted that the examining
division in the impugned decision contented itself with reproducing the
appellant's submission and subsequently with stating that the relevant feature
could not be unambiguously derived from the description as originally filed.
Thus, as its reasoning it merely repeated in abbreviated form the "gold
standard" developed by the case law for assessing compliance with Article
123(2) EPC. However, in order to meet the legal requirement for reasoned
decisions under Rule 111(2) EPC, the decision should discuss the facts,
evidence and arguments which are essential to the decision in detail and has to
contain the logical chain of reasoning which led to the relevant conclusion
(see Case Law of the Boards of Appeal, 8th edition 2016, section III.K.4.2.1,
with further references).
The examining division, however, did not give any
arguments as to why, contrary to the appellant's assertion, the expression
"continuous bands" could not be derived from the text passage
"the central 16-band partition covering [64, 191]" in paragraph
[0029] of the description and from the examples which allegedly define
continuous band groups. Consequently, in the absence of any arguments and of a
logical chain of reasoning in the decision under appeal, the latter does not
permit the board to judge whether the issue had been sufficiently investigated,
or indeed investigated at all (see e.g. T 153/89, Reasons 5, as to lack of
reasoning for denying inventive step). Such a decision which does not take into
account the arguments submitted by the appellant also contravenes Article
113(1) EPC and constitutes a substantial procedural violation (see T 1205/12,
Reasons 7 and 8).
The aforementioned fact that the appellant at the
same time gave its possible consent to the omission of the feature at hand does
not, for the same reasons as outlined above (see point 2.3.1 (a)), alter this
conclusion. The appellant's statement cannot be construed as abandoning its
right to a reasoned decision in case the application were to be refused.
2.3.2 Furthermore, as the second reason for the
application's refusal, the examining division came to the conclusion that the
appellant, by rewording the characterising portion of the newly filed
independent claims 1, 8, 11 and 16, did not introduce any further limitation in
terms of technical features compared to the corresponding claims of the
original fourth auxiliary request which had already been filed and dealt with
during the oral proceedings. As a consequence, the newly filed claims could
likewise not be regarded as being allowable. Hence, without explicitly
addressing this issue, the examining division obviously assumed that it could
take a direct decision without violating the appellant's right to be heard
because ultimately the situation was equivalent to that in which an applicant
wished to maintain a higher-ranking request. In such a situation the grounds
and evidence behind the non-admittance of the request filed in response to the
communication under Rule 71(3) EPC had already been dealt with in the
examination proceedings (see point 2.2 above).
(d) To sum up, it is not relevant to the board's
decision whether the correct view on inventive step is the appellant's or the
examining division's. Rather, the crucial issue is that the examining division
has wrongly judged the features added to claim 1 as containing no further
restriction and thus as redundant.
2.4 As a result, neither of the examining
division's lines of argument could justify a direct decision after the
appellant's response under Rule 71(6) EPC. Thus, this conduct of the
proceedings violated the appellant's right to be heard pursuant to Article
113(1) EPC, constituting a substantial procedural violation (see T 1066/96,
Reasons 3.2).
3. Remittal to the department of first instance
Since there has been a substantial procedural
violation, and in order to allow the appellant to argue its case before two
instances, the board ex officio exercises its discretion under Article 11 RPBA
and remits the case pursuant to Article 111(1), second sentence, EPC to the
department of first instance for further prosecution without an analysis of the
appealed decision in its substantive aspects or a decision on the appellant's
claim requests on file. It cannot be ruled out that the examining division,
after considering the arguments which the appellant - due to the
above-mentioned substantial procedural violation - could put forward only with
the statement setting out the grounds of appeal, will come to a different
decision. Accordingly, the board sees no special reasons pursuant to Article 11
RPBA which would justify refraining from remitting the case to the department
of first instance.
4. Reimbursement of the appeal fee
In view of the foregoing, the appeal is successful
to the extent that the decision under appeal is set aside. Moreover, as a
consequence of the substantial procedural violation the appellant was only able
to have its right to be heard restored by filing the appeal. In view of this
the board considers reimbursement of the appeal fee to be equitable (Rule
103(1)(a) EPC) and orders it ex officio.
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.
This
decision T 1567/17 (pdf) has European Case Law Identifier: ECLI:EP:BA:2018:T156717.20180213 The file wrapper can be found here. Photo obtained via Pixabay under CC0 license (no changes made).
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