T 0820/10 (New evidence/LG) 10-01-2014

1. The appeal is admissible.

2. Violation of the right to be heard

2.1 The procedural principle of the "right to be heard" is enshrined in Article 113(1) EPC. Article 113(1) EPC provides:

"The decisions of the European Patent Office may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments."

The principle of the right to be heard under Article 113(1) EPC is so fundamental that denial of it with respect to the ratio decidendi of any decision taken by a department of the EPO constitutes - in itself - a substantial procedural violation and justifies, for that reason alone, that the decision under appeal is set aside, that the case is remitted to the first-instance department, and that reimbursement of the appeal fee is to be considered equitable pursuant to Rule 103(1)(a) EPC. The right to be heard self-evidently also applies to evidence related to establishing the skilled person's common general knowledge at the application's filing date (see e.g. R 12/12, point 2). Furthermore, even if the appellant has not requested reimbursement of the appeal fee, the Boards of Appeal may order such a reimbursement in accordance with Article 114(1) EPC (cf. J 7/82, OJ 1982, 391, point 6).

2.2 In the present case, the decision of the examining division to refuse the application was based on the ground of lack of inventive step (Article 56 EPC) in view of D1 combined with the skilled person's common general knowledge as regards the former main request and first to third auxiliary requests. The skilled person's common general knowledge was evidenced by documents D1a and D1b (cf. appealed decision, sections 1.1 and 5.1). However, evidence D1a, which was annexed to the appealed decision, and evidence D1b had never been referred to during the examination proceedings, i.e. they were both cited for the very first time in the appealed decision itself (cf. section 1.1, first paragraph, page 4, third paragraph and section 5.1, second paragraph). As a matter of fact, the applicant has had no opportunity to present its comments in relation to D1a and D1b. In this context, the appellant pointed out, in its statement setting out the grounds of appeal, that the applicant had not been given any opportunity to present its arguments with respect to D1a (see section 3.8) but did not request reimbursement of the appeal fee.

2.3 For the purpose of assessing whether or not the appealed decision was based on grounds or evidence on which the applicant has had an opportunity to present its comments, the board finds it necessary to determine if D1a and D1b were presented only as additional, voluntary information, e.g. for illustration purposes, or as evidence on which the finding of lack of inventive step at least with regard to the main request was effectively based.

2.4 In this regard, it is apparent to the board that D1b was cited as evidence that the disclosure of page 7, lines 13-16 in D1 represented a "hybrid ARQ" system as claimed in claim 1 in view of the common general knowledge of the skilled person (cf. appealed decision, page 2, section 1.1, first paragraph), while D1a was quoted as evidence that "softer handovers" as supposedly implied by the features of claim 1 formed part of the skilled person's common general knowledge (cf. appealed decision, page 4, third paragraph). As a consequence, the main request was refused by the examining division based on the evidence D1, D1a, and D1b. Apparently, documents D1a and D1b were sufficiently relevant to the examining division to cite them in order to develop its chain of reasoning as regards the question of inventive step. In particular, D1b seems to have been cited in the appealed decision as a direct response to the counter?arguments provided by the applicant in relation to the definition of a hybrid ARQ (HARQ) scheme (cf. minutes of the first?instance oral proceedings, section 6: "... The applicant vehemently objected to this analysis, arguing that D1 merely suggests to combine ARQ with FEC which, in his view, is not equivalent to HARQ ...").

2.5 For the sake of completeness, the board also notes that the statement setting out the grounds of appeal signifies that the applicant could have reasonably been expected to put forward potentially persuasive arguments on the relevance of at least document D1a regarding the assessment of inventive step - if it had actually been given the opportunity to comment on it (cf. page 11, section 3.8). However, for whatever reasons, the examining division did not give this opportunity, nor did it rectify the appealed decision by way of interlocutory revision under Article 109(1) EPC.

2.6 In conclusion, the decision under appeal relied upon evidence on which the applicant did not have an opportunity to present its comments. This clearly violates the right to be heard within the meaning of Article 113(1) EPC and therefore constitutes a substantial procedural violation in the sense of Rule 103(1)(a) EPC as well as a fundamental deficiency apparent in the first-instance proceedings within the meaning of Article 11 RPBA. For this reason alone, the appeal is to be considered allowable, the appeal fee is to be reimbursed, and the case is to be immediately remitted to the department of first instance without any further examination as to its merits.

3. In view of the above, the board has decided to set the decision under appeal aside, to order reimbursement of the appeal fee under Rule 103(1)(a) EPC, and to remit the case to the examining division pursuant to Article 11 RPBA and Article 111(1) EPC.