2.3.1 General principles

Art. 113(1) EPC requires that decisions may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments.

According to the Enlarged Board of Appeal (see chapter V.B.4.3.8 "Reasons for a decision allegedly surprising"), this implies that a party may not be taken by surprise by the reasons of a decision, referring to unknown grounds or evidence (R 3/13; see also T 1378/11). A purely subjective surprise, however, has no bearing on whether a party had an adequate opportunity to comment. "Grounds or evidence" within the meaning of Art. 113(1) EPC need not emanate from the board, it is sufficient if another party raises the objection (R 2/08). If the reason given in a decision corresponds to an argument put forward by the other party (see also T 405/94), the petitioner was aware of it and thus not taken by surprise (R 4/08, R 12/09 of 15 January 2010 date: 2010-01-15, R 8/14) unless the board clearly indicated that it regarded those arguments as not convincing (R 11/12).

In T 996/09 the board held that the right to be heard was a fundamental guarantor for the parties that proceedings before the EPO would be conducted fairly and openly (with further reference to J 20/85 and J 3/90) and was intended to ensure that the parties to the proceedings were not taken by surprise by grounds mentioned in an adverse decision (following T 669/90, T 892/92, T 594/00 and T 343/01; see also T 197/88, T 220/93). In T 435/07 the board held that the grounds on which a decision were based had to be communicated to the applicants in such a way that they were put in the position to defend their rights. An objection against the grant of a patent had to be raised in such a way that the applicants were able to understand its factual basis and to react accordingly without first having to guess what the examining division might have had in mind.

Although parties may not be taken by surprise by the reasons for a decision, it is also settled case law of the Enlarged Board of Appeal under Art. 112a EPC that a board of appeal is not required to provide the parties in advance with all foreseeable arguments in favour of or against a request. In other words, parties are not entitled to advance indications of all reasons for a decision in detail (see chapter V.B.4.3.5 "No obligation to provide detailed reasons for a decision in advance"). In T 1634/10, T 2405/10 and T 1378/11 the boards explicitly applied this case law of the Enlarged Board of Appeal in relation to Art. 112a EPC to first instance proceedings.

In T 1065/16, lack of reproducibility as a ground for opposition had not been a subject of the opposition proceedings until the oral proceedings. It therefore amounted to a fresh ground for opposition. In its summons, the opposition division had expressly stated that only novelty and the inventive step of claim 1's subject-matter were to be examined. The introduction of a fresh ground for opposition thus came as a surprise. Having decided to admit the new ground of opposition into the oral proceedings, the opposition division should have given the patent proprietor the opportunity to present more detailed arguments on reproducibility. After all, the patent proprietor had no reason to expect that a decision would also be taken on the actual merits of the ground for opposition during the discussion on admissibility. As it had not been given sufficient opportunity to comment on this new ground for opposition, the opposition division had infringed Art. 113(1) EPC and thus committed a substantial procedural violation.

In T 2351/16 the board found that that the examining division had issued a decision of refusal after only one communication under Article 94(3) EPC as such did not constitute a violation of the appellant's right to be heard (see also chapter IV.B.2.5. "Refusal after a single communication"). However, the board considered the assertion that the appellant could not be surprised by an additional argument in support of the division's objection (mentioned for the first time in the decision) to be highly questionable. The refusal of an application based on a reasoning expressed for the first time in the decision constitutes a violation of the applicant's right to be heard and, therefore, a substantial procedural violation.