T 2557/12 30-09-2013

1. In the following reference is made to the provisions of the EPC 2000, which entered into force as of 13 December 2007, unless the former provisions of the EPC 1973 still apply to pending applications.

2. The appeal complies with the requirements of Articles 106 to 108 EPC and Rule 99 EPC and is, therefore, admissible.

3. Substantive procedural violation

3.1 In the appellant's view, the phrase "In the case of the Examining division would decide to reject the application, an oral proceeding would be requested pursuant to article 116 EPC." concluding the applicant's reply to the examining division's communication constituted a valid request for oral proceedings. Thus, by refusing the application without summoning to oral proceedings, the examining division committed substantial procedural violations in the following respects :

(i) the examining division’s decision was based on a perverse and illogical interpretation of a request, and contravened the principle of legitimate expectations;

(ii) the decision violated the applicant’s fundamental right to be heard;

(iii) the examining division ignored the EPO' obligation to warn applicants if errors or omissions would lead to a loss of rights;

(iv) the case law relied on by the examining division was not relevant to the present case.

3.2 In the contested decision, the examining division noted that the applicant had not requested oral proceedings pursuant to Article 116 EPC (paragraph 4 of the contested decision) because the cited phrase, due to the use of the subjunctive form "would be requested", did not constitute a request for oral proceedings. Reference was made in this respect to decisions T 528/96 and T 299/86. Consequently, instead of issuing a further communication or a summons to oral proceedings, the examining division issued its decision to refuse the application.

3.3 In the Board's view, the examining division’s interpretation is not altogether unreasonable and thus cannot be qualified as "perverse" or "illogic". After all, the appellant itself takes into consideration the possibility of "errors and omissions" (point 4.4 of the statement of grounds of appeal). Moreover, as a matter of principle, it lies in a party's responsibility to file its requests in an unambiguous manner. In this context, it is added that, up to the decision taken, there is no action apparent on the part of the examining division which could have nurtured any legitimate expectations on the applicant's side as to a positive outcome of the examination proceedings.

3.4 On the other hand, the examining division's categorical position that there was no valid request for oral proceedings is not tenable. Notwithstanding its inherent ambiguity due to the use of the subjunctive formulation, the phrase in question leaves little doubt about the applicant's intention to avoid an immediate refusal of its application.

In this situation, any risk of procedural deviance could have been easily avoided if the examining division had sought respective clarification from the applicant before issuing its decision.

In fact, in the Board 's understanding the phrase in question should be considered more likely as a request for oral proceedings than not.

3.5 The examining division saw analogies in its interpretation to the factual situations underlying decisions T 528/96 and T 299/86.

The Board disagrees because the statements made in these cases could not reasonably be interpreted as actual requests for oral proceedings.

In case T 528/96 (not published in the OJ) a patentee had stated in its response to the opposition "Should the opposition division feel that further information is required, the patentee will be pleased to respond in due course, either in writing or during the oral hearing". The then deciding board did not consider the reference in this statement to an "oral hearing" to constitute a formal request for oral proceedings according to Article 116 EPC (T 528/96 : point 2 of the "Reasons").

In case T 299/86 (not published) the deciding board held in its interlocutory decision of 23 September 1987 that the phrase "I reserve my right to request oral proceedings under Article 116 EPC" is not in itself an actual request for oral proceedings since a clear distinction has to made between actually "making a request for oral proceedings" and "reserving the right to make a request for oral proceedings" (T 299/86 : point 4 of the "Reasons").

3.6 Instead, given the circumstances of the present case, the Board sees considerable similarities to the facts underlying case T 1136/10 (not published), where an applicant had stated "… should the Examiner feel disposed to reject the application at any time, we would request Oral Proceedings, purely as a precautionary measure, so as to avoid such a rejection".

3.7 In view of the above observations, the Board has come to the conclusion that the phrase concluding the applicant's letter of 7 April 2010 should have been understood as a valid request for oral proceedings in case the examining division considered a rejection of the application. Ignoring this request constitutes a substantial procedural violation on the part of the examining division since it deprived the applicant of its right to oral proceedings (Article 116 EPC) and of its right to be heard (Article 113(1) EPC).

Therefore, the Board complies with the appellant's main request by setting the decision under appeal aside and remitting the case to the examining division for oral proceedings under Article 116 EPC to take place.

Moreover, it is equitable that the appeal fee should be reimbursed pursuant to Rule 103(1)(a) EPC.