4.4.2 Not the same subject of proceedings

In T 731/93 the board stated that where fresh evidence had been admitted into the proceedings, the "subject" of such proceedings, as construed by reference to the text of Art. 116(1) EPC 1973 in all three official languages, could no longer be the same.

In T 194/96 new citations were submitted after the first oral proceedings that were more pertinent than the documents on file and which could and in fact did radically change the nature of the decision. The board held that in such a case the subject of the proceedings could no longer be the same.

In T 1880/11 after the board had in a first decision ordered a patent to be granted on the basis of the main request and the description to be adapted accordingly, the examining division refused the application a second time without holding oral proceedings. The board held that there had been a new subject before the examining division, namely how to adapt the description and the figures in order to fulfil the board's order. It could at least have been discussed during oral proceedings whether the section of the first appeal decision on which there was disagreement between the division and the applicant belonged to the ratio decidendi of that decision and how this section should be interpreted.

In T 2106/09 the board had in a previous decision remitted the case to the opposition division. In its statement of grounds for the earlier appeal, the appellant had changed the subject of the proceedings by introducing a new citation and claiming a lack of inventive step on the basis of a combination of the teachings of various citations. The opposition division had thus been wrong to consider that the subject of the proceedings was the same and, by issuing the contested decision without holding oral proceedings, as requested by the appellant, it had infringed the right to be heard. See T 120/96, T 679/97, T 1548/11.

In T 1775/12 the board held that the procedural issue of admission under R. 137(3) EPC of amendments filed in response to a communication under R. 71(3) EPC constituted a "subject of the proceedings" within the meaning of Art. 116(1) EPC, second sentence, EPC which was distinct from the discussion of matters of substantive law that had previously taken place at oral proceedings.