2.4. Consideration of the parties' arguments, submissions and evidence
2.4.4 Failure to consider submissions made after a communication
In T 1709/06 it was held that, not only must an opportunity to present comments be given, but these comments must actually be taken into account (see also in this chapter III.B.2.4.2). The decision "on the state of the file" expressly stated that the applicant had filed no submissions after the final communication, which was incorrect. Because the examining division had therefore ignored potentially significant arguments presented in a reply following a communication containing a new objection, the applicant had been denied its right to comment on all the grounds for refusing the application.
The board in T 1997/08 held that for an examining division not to violate an applicant's right to be heard, its decision had to actually address the arguments put forward by the applicant in its reply to the communication. It may be assumed that the right to be heard has been contravened if the reasons given for the examining division's decision merely repeat the reasons given for the communication issued before the said reply (see also T 116/12).
In T 921/94 the board held that the appellant's bona fide submissions and the technical information provided in reply to a communication substantially changed the points at issue, and that the examining division had an obligation under Art. 96(2) EPC 1973 (Art. 94(3) EPC) and Art. 113(1) EPC to inform the appellant of the objections arising in the new situation and to invite it to file further observations before refusing the application. A decision which only comprises a mere formal acknowledgement of the applicant's submissions, without dealing with them in substance, contravenes the general principle of good faith and fair proceedings that reasoned decisions contain at least some reasoning on the crucial points of dispute in order to give the party concerned a fair idea of why his submissions were not considered convincing (see also T 1154/04).
In T 296/96 the applicant had submitted unconvincing arguments in his reply to the first and only communication. The examining division refused the application on the basis of the objections mentioned in the first communication, and did not issue a second one. Since, however, the main arguments for refusing the application were a mere repetition of those mentioned in the first communication, the contested decision was based on grounds on which the applicant had had an opportunity to present his comments (see also T 2316/10).
In T 452/16 the board found that just indicating that the applicant's arguments filed in response to a communication were unconvincing, without addressing them in detail, might be sufficient in a communication preparing oral proceedings. However, the mere reference to such a communication could not suitably replace the grounds for a decision to refuse the application, because the reasons why the examining division upheld its opinion were obscure.
- J 11/20
Abstract
In J 11/20 the applicant appealed a decision of the Receiving Section refusing their application for the reason that the amended drawings filed by the applicant to remedy formal deficiencies in the application documents were not in agreement with the application documents as originally filed and, despite the invitation by the Receiving Section dated 14 March 2019, the applicant had not corrected this deficiency in due time.
In the statement of grounds of appeal, the appellant submitted that the Receiving Section's communication dated 14 March 2019 had appeared not to have been received by them. They also objected that the EPO had committed a substantial procedural violation by providing information on a procedural non-compliance leading to a severe loss of rights to an assistant by means of an informal telephone call, rather than to the duly appointed representative with an official communication. Informing, in an informal manner, the assistant instead of the duly appointed professional representative, prevented the latter from the possibility to correctly react. The appellant furthermore indicated that these arguments had already been brought to the attention of the Receiving Section with the letter dated 24 October 2019, in reply to the communication under Art. 113(1) EPC. However, they had remained disregarded and the Receiving Section had issued the appealed decision.
In the context of the reimbursement of the appeal fee under R. 103(1)(a) EPC, the Legal Board saw at least a substantial procedural violation in the fact that the Receiving Section had disregarded the objection of lack of receipt of the communication dated 14 March 2019, and had given no consideration to the request for re-establishment of rights. The lack of receipt of this communication had been disputed by the appellant – in addition to the statement of grounds of appeal – before the appealed decision was issued, both in the request for re-establishment of rights and in reply to the communication under Art. 113(1) EPC.
The Legal Board remarked that in the Receiving Section's communication under Art. 113(1) EPC, by reference to the telephone conversation with the assistant of the appellant's representative, the assumption that the communication dated 14 March 2019 had actually been received by the professional representative was taken as a fact. However, there was no trace in the file that the respective telephone note had also been formally notified to the professional representative, giving him the chance to take position on this fact before it being taken into account in the communication under Art. 113(1) EPC.
The Legal Board held that, by simply disregarding the appellant's submissions, the Receiving Section had violated the right to be heard under Art. 113(1) EPC. It is a well-established principle that this right requires not only that an opportunity to present comments is given, but also that these comments are actually taken into due consideration in the decision. The Legal Board concluded that this violation was of a substantial nature since it had affected the reasons on which the appealed decision had been taken, namely the assumption that the communication dated 14 March 2019 had been received by the appellant and thus the deficiencies under R. 58 EPC had not been corrected in due time. The appellant had been given no other choice than filing the appeal. In view of these circumstances, the Legal Board considered that reimbursement of the appeal fee was equitable.