3. Text submitted or agreed by applicant (patent proprietor) – Article 113(2) EPC

In T 1227/14 the appellant I (patent proprietor) submitted that, contrary to what was indicated in the minutes of the oral proceedings, it had not delegated the adaptation of the description to the opposition division. It had instead requested a return to written proceedings for the adaptation of the description, but that had been omitted from the minutes. In spite of this, it had not requested the correction of that omission by the opposition division. The opposition division, however, had issued the impugned interlocutory decision on the text in which the opposed patent could be maintained without first submitting that text – containing the division's adapted description – to the patent proprietor. It had thus violated the principle of the right to be heard laid down in Art. 113(2) EPC. Even and especially where adaptation of the description is delegated to an EPO department, there is no scope for releasing it from this obligation.

The board in T 861/16 noted that there was no mention anywhere, in either the minutes or the decision, that the patent proprietor had approved the amended text. Nor had the respondent (opponent) offered any evidence that the patent proprietor had explicitly approved a text submitted before the opposition division's decision. The board held that since the principle of tacit acceptance (qui tacet consentire videtur) was not established in the EPC, it was not enough to ask the patent proprietor if it wished to comment on the amendments to the description carried out by the opposition division. The opposition division had to ensure that the patent proprietor had given its agreement. The board held that in the absence of the patent proprietor's approval of the version as maintained, the proceedings before the opposition division were vitiated by a substantial procedural violation (Art. 113(2) EPC).

In R 8/16 the Enlarged Board held that an alleged violation could not be fundamental, in the sense of intolerable, if it did not cause an adverse effect. In the case in hand the Enlarged Board stated that the omission of the reasons for the admission of the main request may not be a practice which it expressly endorsed but given that the petitioner did not explain and the Enlarged Board itself could not see what adverse effect might have been caused by not hearing the petitioner on this issue, and given that the admission of the petitioner's main request was clearly a positive result for the petitioner, it was not seen as a fundamental violation of Art. 113(1) EPC. The Enlarged Board further held that, as a matter of principle, the board was free to examine the (pending) claim requests in any order, and therefore it was also free to conduct the discussion on them in any order, without having to give reasons. It stated that the principle of party disposition expressed in Art. 113(2) EPC did not extend so as to permit a party to dictate how and in which order a deciding body of the EPO may examine the subject-matter before it. The only obligation on the EPO was not to overlook any still pending request in the final decision. The order of examination or discussion is a question of procedural economy, for which mainly the deciding body is responsible. A board has no particular duty to give reasons why it chose to proceed as it did. Giving reasons on withdrawn requests might well have given rise to an objection under Art. 113(2) EPC.