In the examination case under appeal, the then applicant's representative requested approximately 5 weeks before the scheduled oral proceedings the postponement of the oral proceedings and the postponement of the final date for making written submissions ("final date") on the grounds that he had been informed that the present application had been transferred from the then registered applicant to another applicant, and that he did not know whether he was to remain the representative. This request was refused by the examining division as it allegedly did not constitute a serious ground within the meaning of OJ EPO 1/2009, 68, point 2.3. The applicant appeals, and argues that his right to be heard was violated and that the decision was not sufficiently substantiated.
In considering the appeal, the board considers the request for the postponement of the date of oral proceedings to be distinct from the request for the postponement of the final date, and concludes that
the examination division failed to sufficiently substantiate in its decision why the final date could not be postponed. The applicant's main request is thus held allowable.
There are interesting deliberations in this case. Does the situation indeed qualify as a serious ground as alleged by the appellant, even though it is not explicitly mentioned in OJ EPO 1/2009, 68, point 2.3? Did the examination division have discretionary power in the first place to postpone the final date in view of Rule 116(1) EPC stipulating that Rule 132 shall not apply? And can the date of oral proceedings indeed be postponed independently from the final date or not?
Reasons for the Decision
This procedural request is directed to setting aside the decision under appeal, to remitting the case to the examining division for further prosecution and to reimbursing the appeal fee (cf. point XIII above).
1.1 Alleged substantial procedural violation as regards refusal of the request to postpone the date for oral proceedings
1.1.1 The appellant argued that the refusal of its request for postponing the date for oral proceedings before the examining division was tainted with a violation of its right to be heard under Article 113(1) EPC, and was not sufficiently substantiated within the meaning of Rule 111(2) EPC.
1.1.2 As to the exercise of the examining division's discretion in not allowing the postponement of the date for oral proceedings before it, it is true that a change of both the applicant and the representative after having been summoned to those oral proceedings is not expressly mentioned in the list of examples of serious reasons within the meaning of the "Notice from the European Patent Office dated 18 December 2008 concerning oral proceedings before the EPO", OJ EPO 1/2009, 68, point 2.3. The board takes note of the examining division's arguments (cf. appealed decision, Reasons 1.2.3 and 1.2.4) that the new applicant could have instructed, already before the assignment regarding the transfer of the present application was signed, a patent attorney to prepare for the oral proceedings, and that the newly appointed professional representative could be expected, before taking on the mandate, to make sure that he was indeed able to prepare for such oral proceedings within a one-month period (cf. T 37/97, Reasons 2.2; J 4/03, Reasons 5). The examining division also took into account, inter alia, the complexity of the case.
1.1.3 In that regard, the board considers that, under the hypothetical assumption that there had been no request for postponement of the final date for making submissions in preparation for the oral proceedings (henceforth "final date") or that such request had no relation whatsoever to the request for postponement of the date for oral proceedings, it would appear that all the arguments presented by the then applicant as regards the postponement of the date for oral proceedings were properly addressed and treated in the appealed decision (see point 10 of the Summary of Facts and Submission and point 1 of the Reasons).
1.1.4 However, the appellant repeatedly requested that the final date of 6 January 2014 be postponed, arguing that the new applicant, represented by the newly appointed representative, could not reasonably be expected to file amendments less than one week after the change of applicant and representative. These arguments were not addressed in the entire decision under appeal (see point 1.2.5 below). It is not clear whether the examining division in fact saw any relationship between the request for postponement of the final date and the request for postponement of the date for oral proceedings. If the examining division did see any such relationship (such as a strict link between the two dates), the request for postponement of the final date and the supporting arguments should have been addressed, at least, in the context of the refused request for postponement of the date for oral proceedings (see point 1.2.6 below).
1.2 Alleged substantial procedural violation as regards refusal of the request to postpone the final date
1.2.1 The appellant submitted that the time available between the conclusion of the application-transfer agreement and the final date set by the examining division was too short for studying the case and for preparing reasoned written submissions (cf. points III and V above).
1.2.2 The final date for making written submissions in preparation for the oral proceedings is codified in Rule 116 EPC as follows (emphasis added by the board):
"(1) When issuing the summons, the European Patent Office shall draw attention to the points which in its opinion need to be discussed for the purposes of the decision to be taken. At the same time a final date for making written submissions in preparation for the oral proceedings shall be fixed. Rule 132 shall not apply. New facts and evidence presented after that date need not be considered, unless admitted on the grounds that the subject of the proceedings has changed.
(2) If the applicant ... has been notified of the grounds prejudicing the grant ..., he may be invited to submit, by the date specified in paragraph 1, second sentence, documents which meet the requirements of the Convention. Paragraph 1, third and fourth sentences, shall apply mutatis mutandis."
Rule 116(1) EPC hence stipulates that Rule 132 EPC shall not apply. In particular, Rule 132(2) EPC reads as follows:
"Unless otherwise provided, a period specified by the European Patent Office shall be neither less than two months nor more than four months; in certain circumstances it may be up to six months. In special cases, the period may be extended upon request, presented before the expiry of such period."
Thus, Rule 132(2) EPC, on the one hand, establishes that, in the absence of specific provisions, periods specified by the EPO normally shall be between two and four months (first sentence). On the other hand, it stipulates that, in special cases, such periods may be extended upon request (second sentence). From that wording alone it is not clear to the board whether the non-applicability of Rule 132(2) EPC to Rule 116(1) EPC relates only to the above limitations for periods specified by the EPO (allowing e.g. that a final date less than two months ahead of the date for oral proceedings be set) or whether it should also preclude the possibility of extending specified periods implying that the final date set under Rule 116(1) EPC could not be changed. In fact, according to a literal reading of the provisions of Rule 116(1) EPC in conjunction with Rule 132(2) EPC as done in the Guidelines for Examination in the EPO (see D-VI, 3.2, last sentence e.g. in the applicable version of September 2013), said final date may not be extended.
1.2.3 However, the admissibility of claim amendments filed after the final date specified in Rule 116(1) EPC is subject to the examining division's discretion. The examining division may not refuse to consider new claims on the sole ground that they had not been filed prior to the final date stated in a summons to oral proceedings (see e.g. T 755/96, OJ EPO 2000, 174, Reasons 4.1; T 798/05, Reasons 7, last two paragraphs). When Rule 71a(1) EPC 1973, the predecessor of Rule 116(1) EPC, was introduced, that rule was not intended to restrict the discretion conferred on EPO departments under Article 114(2) EPC (see Explanatory Memorandum CA/12/94 rev. 1, point 7.4, as quoted in T 755/96, Reasons 2.2). In this context, it may at least be questioned whether the non-applicability of Rule 132(2) EPC in Rule 116(1) EPC has necessarily to be understood as an exclusion of any discretionary power exercised by the examining division to postpone the final date.
1.2.4 Should the postponement of the final date under Rule 116(1) EPC indeed be excluded by the negative reference to Rule 132(2) EPC, the question arises whether the final date may be changed if the scheduled oral proceedings are cancelled and a new date for them is set by the first-instance department. While there may be situations where it is appropriate to change the date for oral proceedings while maintaining the final date, the board considers that a change of the final date should normally be allowable when the date for oral proceedings is postponed. At least in cases where a final date is specified relative to the date for oral proceedings (usually one month before the scheduled oral proceedings), it could even be argued that the final date is postponed automatically when the oral proceedings are postponed.
1.2.5 In the present case, the final date had been set to 6 January 2014. The appellant's representatives requested a postponement of this date repeatedly and separately from their request to postpone the date for oral proceedings (cf. points III and VIII above). It is apparent to the board that the statements made by the first examiner of the examining division (cf. points IV and VII above) seem to imply that the examining division in fact took a final and binding decision within the meaning of J 8/81 (OJ EPO 1982, 10, Headnote I) on the request for postponement of the final date, on which the then applicant apparently had no opportunity to comment, rather than having merely expressed its preliminary opinion thereon. It is also evident that the specific reasons for not allowing any postponement of the final date - regardless of the refusal of the request for postponement of the date for oral proceedings - are not addressed in the decision under appeal. It is only mentioned that the question of filing amendments of the application after expiry of the final date did not arise (cf. point IX above). This remark cannot, however, be considered to be a reasoning for the refusal of the request for postponement of that final date. The fact that no submissions other than procedural requests were filed after the final date does not mean that the request for postponement of the final date has become pointless. The request for postponement of the final date was never withdrawn and the appellant's desire to file amended claims was made clear even during oral proceedings before the examining division when it requested that the examination proceedings be continued in writing.
Hence, the examining division's decision to refuse the appellant's request for postponement of the final date lacks a reasoning required under Rule 111(2) EPC.
1.2.6 The board can only surmise that the examining division may have assumed that the final date is only to be postponed together with the date for the oral proceedings and that, as a consequence, the request for postponement of the final date and the request for postponement of the date for oral proceedings could not be separated from each other and could only be decided together. However, in this case or if the examining division indeed considered those two requests to be linked in any other way, the appellant's arguments presented concerning the request for postponement of the final date should have been considered at least in the context of the request for postponement of the date for oral proceedings (see point 1.1.4 above).
1.3 In view of the above, the board concludes that, due to a lack of substantiation within the meaning of Rule 111(2) EPC with regard to the request concerning the final date and/or to the request concerning the date for oral proceedings, the examining division indeed committed a substantial procedural violation which justifies the impugned decision being overturned.
At the same time, this amounts to a fundamental deficiency apparent in the first-instance proceedings within the meaning of Article 11 RPBA (see e.g. T 309/09, Reasons 8). It is also worth noting that the board does not take any position as to whether the right to be heard under Article 113(1) EPC was violated in any other way than by lack of substantiation in the decision under appeal. However, such a lack of substantiation under Rule 111(2) EPC is in itself sufficient reason to set aside the decision under appeal. Moreover, said lack of substantiation, in particular with respect to the request for postponement of the final date, prevents the board from a comprehensive assessment of the examination proceedings in view of Article 113(1) EPC.
1.4 Remittal for further prosecution (Article 11 RPBA)
1.4.1 Pursuant to Article 11 RPBA, a board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first-instance proceedings, "unless special reasons present themselves for doing otherwise". In this regard, it has to be established in the present case whether special reasons are discernible against such remittal.
1.4.2 Despite the fact that the filing date accorded to the present application is 31 March 1999 (i.e. eighteen years ago) and that substantive issues of the case have already been touched upon in these appeal proceedings (cf. board's communication under Article 15(1) RPBA, points 3.1 to 3.3), the board does not see any "special reason" justifying a deviation from the general rule prescribed by Article 11 RPBA. In fact, the appellant was only partially responsible for the delays in the first-instance proceedings. The present application was actually filed in April 2003 as a divisional application. After issuance of a first communication in July 2004 there was no office action until the appellant had a telephone conversation with the first examiner in September 2011. The appellant requested remittal of the case for further prosecution, and filed amended sets of claims in the appeal proceedings. Under these circumstances, the appellant's interest in having the case examined in two instances prevails over the general interest of bringing proceedings to a close within an appropriate period of time.
1.4.3 In conclusion, the present case is to be remitted to the examining division for further prosecution under Article 111(1) EPC in conjunction with Article 11 RPBA.
1.5 Request for reimbursement of appeal fee
1.5.1 At the oral proceedings before the board, the appellant maintained its request for reimbursement of the appeal fee on the grounds that a substantial procedural violation had occurred in the examination proceedings, without providing further comments supporting this request. Given that the impugned decision is to be set aside and that the appeal is therefore allowable, the board has next to establish whether such reimbursement appears to be equitable under Rule 103(1)(a) EPC.
1.5.2 The board holds that the applicant - and in particular its professional representative - must or should have known, in view of Rule 116(1), last sentence, EPC that it is generally not guaranteed that any written submission is automatically admitted into the proceedings before the EPO for the sole reason that it is filed prior to the final date, nor is it entirely unlikely that a submission may be admitted under the department's discretion when filed after that date. Rather, the then applicant could have followed the invitation from the examining division (cf. point II above) and attempted to file, for example, amended sets of claims with the aim of overcoming the objections raised in the summons to the first-instance oral proceedings after 6 January 2014, the final date set in the summons.
This was, however, not done by the applicant of its own volition. In the board's view, such procedural behaviour speaks against regarding the reimbursement of the appeal fee as equitable within the meaning of Rule 103(1)(a) EPC. A party cannot gain a procedural advantage from an omission of its own, pursuant to the legal principle "nemo auditur propriam turpitudinem allegans" (cf. T 1705/07, Reasons 8.7). The appellant should have known - in view of the rather negative opinion of the examining division set out in its communication accompanying the summons - that filing no amended claims would in all likelihood lead to a refusal of the application based on its merits, and that amendments filed at any time before oral proceedings were not a priori inadmissible. In other words, the substantial procedural violation alone was not causal for the need to lodge an appeal against the eventual refusal of the application. Reimbursement of the appeal fee is therefore refused.
2. FIRST AND SECOND AUXILIARY REQUESTS
Since the appellant's main request is found to be allowable, it is not necessary to consider its first and second auxiliary requests any further.
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the department of first instance for further prosecution.
3. The request for reimbursement of the appeal fee is refused.
This decision T 1750/14 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:T175014.20170131. The file wrapper can be found here. Photo "Improved LEGO Calendar Front" by Bill Ward obtained via Flickr under CC BY 2.0 license (no changes made).