December 2023 T 2024/21 – The Board have remitted this recently refused case to the Examining Division who have been criticized for committing several substantial procedural violations, including depriving an applicant of their all-important right to oral proceedings.
The Boards of Appeal have reminded the Examining Division of the importance of the applicant’s right to oral proceedings in their decision on this recently refused European application relating to a secondary flow path system for a rotor assembly of a gas turbine engine.
The case has now been remitted to the ED after it was found by the Board that several substantial procedural violations were committed. Below is our timeline of the examination procedure and it is safe to say that, after considering the facts, we are siding with the Board on this one.
Timeline of the Examination Proceedings
The European Search Opinion presented objections under Article 84 EPC for lack of essential features and lack of clarity, as well as objections under Article 56 EPC for lack of inventive step. The applicant responded to the ESO by filing amended claims, amended pages of the description and substantial arguments in response to the objections raised. Importantly, the applicant also requested oral proceedings.
The ED issued a communication dated 11 April 2019 raising new objections under Articles 123(2) and 84 EPC, as well as maintaining the majority of the former objections. The ED also informed the applicant that they would not admit any further amendments under Rule 137(3) EPC unless the new objections were overcome.
The applicant responded by filing further amended pages of the description and amended claims, in which a number of claims were deleted to partially address the new Article 123(2) and 84 objections. The applicant also submitted further arguments in response to the maintained novelty and inventive step objections, as well as arguments in response to the outstanding Article 123(2) and 84 objections which weren’t addressed by the claim deletions. Again, the applicant requested oral proceedings.
The ED issued another communication dated 28 August 2020, essentially maintaining all previously raised objections. The ED also informed the applicant that it did not give consent under Rule 137(3) EPC to the newly filed amendments and that “the legal effect of this is that there is no agreed text, which would result in a refusal under Article 113(2) EPC”.
The applicant submitted a final response dated 5 January 2021, filing further amended pages of the description, withdrawing their request for oral proceedings and requesting a decision according to the state of the file. Importantly, the applicant did however make it clear that their previously filed amendments and arguments were maintained. In addition, they protested the non-admittance of amendments under Rule 137(3) EPC and presented further arguments in response to the objections under Articles 84 and 123(2) EPC.
In a final communication issued by the ED dated 25 January 2021, the applicant was informed that their request for a decision on the state of the file could only be accepted if no further amendments and arguments were submitted with the request.
As such, the applicant was forced to file a final response, again withdrawing their request for oral proceedings and re-iterating their request for a decision according to the state of the file.
Hence, the application was refused.
The Board’s View
Unsurprisingly, the Board found that there had been a violation of the applicant’s right to be heard at oral proceedings, at least on the topic of admittance of the amendments under Rule 137(3) EPC, and so they remitted the case to the ED for further examination.
The Board’s main reasoning for their decision is straightforward and reads as follows:
“The right to an oral hearing is an extremely important procedural right which the EPO should take all reasonable steps to safeguard… If a request for oral proceedings has been made, such proceedings have to be appointed. This provision is mandatory and leaves no room for discretion… i.e. parties have an absolute right to oral proceedings.”
The Board also went on to clarify that considerations such as the length or cost of proceedings should not take precedence over this right and also that it should not be assumed that, merely because former objections have been maintained, such objections would be maintained following oral proceedings.
The Board also gave the applicant the opportunity to comment on whether they wished to adhere to their request for oral proceedings even though the case has now been remitted. On this point, the applicant confirmed that their previous request for oral proceedings did not include the issue of remittal. Accordingly, the proceedings are due to continue by means of written communication.
Our Comments
The unconventional behaviour of the ED throughout the entirety of the examination procedure led to the applicant effectively being backed into a corner, leaving them with no choice but to have the application refused and be presented with an appealable decision.
Fortunately for the applicant, the Board clearly did not approve of the ED’s conduct and, rightfully so, the ED’s refusal to cooperate has resulted in a well-deserved telling-off from the Board. Further, the Board’s decision to remit the case appears to be a subtle way of reminding the ED that they are not prepared to do the ED’s job for them.
A key message to take away from this case is the importance of always requesting oral proceedings in the event that the ED should be minded to refuse your application. The applicant in this case exercised their right to request oral proceedings at every possible opportunity and, fortunately for them, their efforts were acknowledged by the Board – who knows which way this appeal would have gone had the applicant not been so consistent in putting forward this request.
