6.5. Opportunity to present comments

Art. 113(1) EPC, in which the right to be heard is enshrined, provides that decisions of the EPO may only be based on grounds or evidence on which the parties have had an opportunity to present their comments. The term "grounds or evidence" in Art. 113(1) EPC should not be narrowly interpreted. The word "grounds'' does not refer merely to a ground of objection to the application or patent in the narrow sense of a requirement of the Convention which is considered not to be met. The word "grounds" should rather be interpreted as referring to the essential reasoning, both legal and factual, which leads to the findings of the decision (see e.g. T 951/92, OJ 1996, 53, with regard to a refusal of the application, T 433/93, with regard to the finding of invalidity and revocation, and T 1056/98 with regard to inadmissibility; on the right to be heard, see also chapter III.B.).

In T 293/88 (OJ 1992, 220) the board found that the decision of the opposition division to revoke the patent without issuing any communication in advance disregarded the fact that the validity of the uncontested claims 7, 9 and 10 had not been challenged at all, and a further opportunity to fall back at least to such position was reasonably to be expected in such circumstances. The onus of raising such related additional matter with the parties was on the opposition division under Art. 113(1) EPC – which it had not done in this case (distinguished in T 463/93; see also T 2094/12).

In T 558/95 the opposition division had issued two written communications before the oral proceedings stating that, "in the provisional opinion of the opposition division", the subject-matter described in the public prior use did not prejudice the contested patent within the terms of Art. 100(a) EPC. The patent proprietor therefore found it "surprising" that detailed consideration was given to the public prior use during the oral proceedings. However, the board held that provisional opinions of this kind were not binding on the further proceedings.

The opposition division that rejects an opposition as inadmissible without providing a reasoning prior to its decision prevents the opponent from responding with comments, thus violating the right to be heard (T 1056/98).

Normally, where a document has been sent to one of the parties, that party is given sufficient time to respond thereto before a department of the EPO takes a decision (T 263/93; see above in this chapter IV.C.6.4). If the case is to be remitted to the department of first instance for further prosecution, the recipient of a document still has, in view of the remittal, the opportunity to contest the arguments put forward by the other party (see T 832/92).

Under Art. 113(1) EPC, the opposition division must expressly give the parties an opportunity to present observations after remittal to it of a case by a board of appeal for further prosecution on the basis of new evidence, even if submissions with respect to this new evidence have already been made during the preceding appeal proceedings (see T 892/92, OJ 1994, 664; see also T 769/91). In T 120/96 another board shared this view and added that the term "opportunity" in Art. 113(1) EPC could only be given effective meaning by applying the principles of good faith and the right to a fair hearing. For such an opportunity to exist, it is necessary that the parties be expressly asked whether or not they wish to present, within a fixed period of time, their comments, or if, as in the case at issue, the parties have already made detailed submissions during the previous appeal proceedings, whether or not these submissions should be regarded as complete. On these grounds alone, the board found that the immediate termination of the opposition proceedings following the remittal, without any intervening communication announcing the resumption of proceedings, was inconsistent with Art. 113(1) EPC.

In T 1027/13, the board held that the categorical refusal of the opposition division to allow the accompanying person to make oral submissions or even communicate with the opponent's representative had in effect been keeping the opponent from taking a position in an "efficient and effective manner" on the contentious issues of the case. It was thus not in line with the principles stated in G 4/95 (OJ 1996, 412; on these principles see also chapter III.V.5.2).