Tuesday, February 02, 2021 T 1370/15 - A board is allowed to introduce common general knowledge without evidence also in inter partes

The use of grids is well known in the art

After his patent was revoked in opposition, the proprietor filed an appeal. The opponent (respondent) did not make any submissions in response to the appeal. The board was not convinced that the appellant's requests were inventive taking the common general knowledge of the person skilled in the art into account. In particular, the common general knowledge should not be restricted to the material presented in the first-instance proceedings or the oral proceedings by the appellant. 

The board provided the following catchword:

Not only in ex parte-, but also in inter partes appeal proceedings, a board is allowed to introduce new ex officio common general knowledge without evidence of such knowledge which prejudices maintenance of the patent, to the extent that the board is knowledgeable in the respective technical field from the experience of its members working on cases in this field. (See Reasons, point 5.3)

(emphasis added)

Monday, January 04, 2021 R 10/18 - No obligation for a Board to discuss irrelevant arguments

Did they miss your submission, or was it not relevant?

The Enlarged board considers the catchword of R 8/15. Catchword 1 of that decision reads (in part, emphasis added): 

(...) One aspect of the right to be heard as covered by Article 113(1) EPC requires a board to consider a party's submissions, i.e. assess the facts, evidence and arguments submitted as to their relevance and correctness. Article 113(1) EPC is infringed if the Board does not address submissions that, in its view, are relevant for the decision in a manner adequate to show that the parties were heard on them, i.e. that the Board substantively considered those submissions. (...)

In this case, a potential issue with this rule is considered. If you don't see your arguments back in the decision then either: the board did not consider your arguments, or the board did consider them but found them to be irrelevant. The former case would infringe the right to be heard, while the latter would not. But how is an appellant to know which of these two options was the case?

The Enlarged board seems sympathetic to this view, but concludes that if you don't see a submission in the decision, then apparently it was not relevant. It leaves the door open though if there are indications to the contrary. 

This case R 10/18 provides the following catchword:

1. One aspect of the right to be heard as covered by Article 113(1) EPC requires a board to consider a party's submissions, i.e. assess the facts, evidence and arguments submitted as to their relevance and correctness.

Article 113(1) EPC is infringed if the board does not address submissions that, in its view, are relevant for the decision in a manner adequate to show that the parties were heard on them, i.e. that the board substantively considered those submissions. (See Reasons, point 2.1.1, affirming the relevant part of catchword 1 of R 8/15).

2. A board is presumed to have taken into account a party's submissions that it did not address in the reasons for its decision, meaning that it, first, took note of them and, second, considered them, i.e. assessed whether they were relevant and, if so, whether they were correct.

An exception may apply if there are indications to the contrary, e.g. if a board does not address in the reasons for its decision submissions by a party that, on an objective basis, are decisive for the outcome of the case, or dismisses such submissions without first assessing them as to their correctness. (See Reasons, point 2.1.1.2).

Tuesday, October 27, 2020 T 560/20 - Change from novelty objection to inventive step in decision to refuse

Does membrane thickness have a technical effect? Does it matter?

During prosecution the claim was objected to on the basis of novelty. In its decision to refuse, it was acknowledged that the thickness of a membrane was not disclosed in the prior art document. As said thickness had no technical effect, the Examining division turned the novelty objection into an inventive step objection. The appropriate thickness could be found from the common general knowledge. 

The board does not like this, and in fact, considers it to be a substantial procedural violation 

Tuesday, August 04, 2020 T 1414/18 - Don't ask and ye shall nevertheless receive, as long as equitable

The central issue in this appeal was the decision to refuse the EP application on the grounds of non-unity. The applicant paid an additional search fee, then requested that it be refunded when submitting responses to the Examining Division and arguments in defense of the unity of the claims. The Board found in favour of the applicant and ordered a refund of the additional search fee, commenting that the decision to refuse the application contained an implicit refusal of the request for the refund, even though a decision on the refund of further search fees should be indicated in the order of the written decision.

The Board was critical of the reasoning given for the need to perform two searches and, in particular, of a communication from the ED in which the applicant was informed, "The next procedural step will be summons to oral proceedings during which the application will be refused (Article 97(2) EPC)". The applicant withdrew the request for oral proceedings and requested a decision according to the state of the file.

The phrase "will be refused" was found to be in contradiction with the principles of the right to be heard under Art. 113(1), as it implied that there were no arguments that could be presented that would not lead to a final refusal of the application. The Board held this to be a substantial procedural violation, which necessitated the applicant's request for a decision according to the state of the file and thus the filing of the appeal. Reimbursement of the appeal fee was ordered on the Board's own motion.

Tuesday, March 31, 2020 T 482/16 - Last-minute additional searches during the oral proceedings to make up for the poor search carried out earlier

In the present case, the applicant was confronted with two new documents, D2 and D3, introduced by the Examining Division during the oral proceedings for the first time. The applicant's request for postponement of the oral proceedings in view of this introduction of D2 and D3 was denied. Upon filing amendments trying to take the disclosure of D2 and D3 into account, the applicant was confronted with two further new documents, D4 and D5, also introduced by the Examining Division during the oral proceedings. No time was given to the appellant to consider these new documents. Rather, the appellant's request for postponement was rejected and the application refused. The applicant appealed the refusal. In the appeal, the Board concluded that: "[Therefore,] the appellant was confronted with new objections based on new evidence during the oral proceedings. Although it is possible for an examining division to introduce new evidence even at a late stage of proceedings, in the present case the course of the examination proceedings suggests that the examining division tried to make up for the poor search carried out when the application was filed by performing last-minute additional searches, in an attempt to find documents more relevant than D1 for the claimed subject-matter", as the Board noted that "According to the impugned decision, these new documents had been found by carrying out an additional search on the day of the oral proceedings, just before their start. This means that the introduction of D2 and D3 was not motivated by the new claim requests filed by the appellant to overcome the lack-of-clarity objection raised during the oral proceedings". "The Board concludes that, by rejecting the appellant's request for postponement of the oral proceedings, the examining division did not provide the appellant with the appropriate opportunity to present its comments on the objection of lack of novelty over D3 in the light of D4 and D5. The appellant's right to be heard on the examining division's novelty objection has thus been violated by the examining division's refusal of its request for adjournment of the oral proceedings, contrary to the requirement of Article 113(1) EPC. This amounts to a procedural violation."

Tuesday, March 05, 2019 T 0831/17 - Haar? Referral. [G 2/19]

A highly intriguing referral to the Enlarged Board, for multiple reasons: it concerns questions regarding the extent of the right to be heard (by a third party) and regarding the proper venue of oral proceedings (in the light of the much-debated relocation of the Boards of Appeal to Haar).

In the present case, during examination proceedings of EP2378735 third party observations (containing objections under Art. 84 EPC) had been filed by private practice firm Jostarndt Patentanwalts-AG. The patent was nevertheless granted. Jostarndt then lodged an appeal against the decision to grant, essentially arguing that, since clarity is not a ground for opposition, it felt deprived of its opportunity to object under Art. 84.

However, the Board found itself bound by the EPC - which only allows an adversely affected party to the proceedings to appeal, the author of third party observations according to Art. 115 EPC not being a party to the proceedings - and deemed the appeal inadmissible.

The appellant saw an unacceptable hiatus in legal protection and demanded clarification of this fundamental question by a decision. It therefore requested oral proceedings on the above question of admissibility.

Surprisingly, after having been summoned on 25 January 2019 for a hearing in the premises of the Board of Appeal in Haar, the appellant then requested transfer of these oral proceedings to Munich, arguing that the European Patent Office is headquartered there and, unlike The Hague, Haar is "not evidently intended as a place for acts or proceedings" in the European Patent Convention.

The move in 2017 of the Boards of Appeal from the Munich Isar building to the municipality of Haar - in a manifest attempt to increase the perceived independence of the Boards of Appeal - was met with dismay and criticism from both the Boards themselves and the public. 

The present Board (3.5.03) considered in particular the question of the right venue of the Boards of fundamental importance for ensuring a uniform application of the law in all appeal proceedings, and decided to refer the following questions (loosely translated from the original German wording) to the Enlarged Board:

(1) In appeal proceedings, is the right to oral proceedings under Article 116 EPC restricted if the appeal is prima facie inadmissible?

(2) If the answer to Question 1 is yes, is an appeal against the decision to grant a patent prima facie inadmissible in this sense, which Appeal has been filed by a third party within the meaning of Article 115 EPC and which has been substantiated by arguing that there is no alternative remedy under the EPC against a decision of the Examining Division not to consider the third party’s objections concerning the alleged contravention of Article 84 EPC?

(3) If the answer to one of the first two questions is no, can the Board hold oral proceedings in Haar without violating Article 116 EPC, if the appellant complains that this location is not in conformity with the EPC and requests that the oral proceedings be moved to Munich?

Questions 1 and 2 are interesting for querying the extent of the right to be heard in proceedings before the EPO. Question 3 is likely to have the greatest impact, as it boils down to whether the President or the Administrative Council of the European Patent Organisation had the power to relocate the Boards (or departments of the Office within the meaning of Article 15 EPC in general) outside the locations mentioned in Art. 6(2) EPC or to whether "Munich" in Art. 6(2) should be interpreted merely as the city with that name (not including Haar) or a (not well-defined) greater Munich area. It would appear that the referring Board favors a more a strict interpretation of “Munich”.

Monday, June 18, 2018 R 7/16 - Decision on remittal before discussing substantive issues

The auxiliary police... could they have helped the petitioner?

This case is a petition for review following an appeal against a decision of the opposition division. Briefly speaking, auxiliary request V was held allowable during the opposition proceedings, but was found to contravene Article 100(c), 123(2) EPC during the appeal proceedings.

In its written decision (the decision under review), the BoA found that the decision of the opposition division presented a fundamental deficiency. Despite the fundamental deficiency, the BoA decided not to remit the case to the opposition division, thereby exercising its discretion under Art. 11 RPBA.

The petitioner's argues in the petition that the substance of the issues, to which the fundamental deficiency pertained, was not taken into consideration by the BoA when the remittal was discussed, and that this represented a fundamental violation of Article 113 EPC.

The EBoA notes that a detailed discussion of the substantive issues before a decision on the remittal would have rendered any remittal pointless since the first instance would have been bound by the considerations of the Board of Appeal or could have expected that its decision would be reversed if it was not in line with the considerations of the Board of Appeal. It was therefore only logical to limit the discussion on the requested remittal to procedural aspects. See also points 3.2.5 and 3.2.6.

Wednesday, April 04, 2018 T 1423/13 - OP at the instance of the EPO

A (belated) Easter picture, with no relation to this case...

In this examination appeal, the Examining Division (ED) warned the Applicant now Appellant that "in case no allowable set of claims is presented, the next office action will be the summons to oral proceedings in the Hague". However, the Applicant did not previously request oral proceedings, and the application was subsequently refused without holding oral proceedings as "the applicant did not request the oral proceedings at any point of the written procedure" and it is therefore "concluded that the applicant's right to be heard has been entirely respected (Art. 113(1) EPC)".

In appeal, the Board however concludes that the applicant had a legitimate expectation that oral proceedings were to be scheduled, and that the course of action of the ED amounted to a substantial procedural violation. As a reminder, Art. 116(1) expressly allows oral proceedings to be arranged "at the instance of the EPO" and thereby "without a request from a party", see GL E III-4.

Thursday, February 15, 2018 R 4/17 - Four is a party

In the present case, the Opponent appealed the decision of the Opposition Division to maintain the patent as granted. The Board of Appeal sent three registered - but without advice of delivery - communications (notice of appeal; statement of the grounds of appeal; further letter) to the Respondent-Proprietor. In the absence of any response from the Proprietor to these letters, the Board of Appeal considered itself to be in a position to issue a decision revoking the patent without the need to hold oral proceedings. This decision of the Board was sent to the parties under cover of a registered letter with advice of delivery. 

The Proprietor filed a petition for review of the decision, arguing that it had no record of ever having received the first three letters, thus depriving him of his right to be heard.

The Enlarged Board now deals with this petition for review, and finds that in the present case, the Proprietor had, within the meaning of Article 113(1) EPC, no opportunity at all to comment on the grounds for the decision under review. This qualifies as a fundamental violation of his right to be heard.


Catchwords:
In the event of any dispute about whether a letter from the EPO reached the addressee or on which date, it is incumbent on the EPO to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee (Reasons, point 2).

[...] parties must be able to rely on the EPO complying with the relevant provisions of the EPC and, at least for the purposes of Article 113(1) EPC, they and their representatives have no duty to monitor the proceedings themselves by regularly inspecting the electronic file (Reasons, point 4).

In respect of the implausibility of the non-arrival of letters put forward by the Other Party the Enlarged Board considers that it cannot be expected that the Petitioner should prove a negative, that is the nonreceipt of a letter, or provide a plausible explanation for non-receipt (Reasons, point 4). 

Friday, February 02, 2018 R 8/16 - A plurality of petition grounds

A petition for review with many grounds...

In opposition proceedings, the patent was upheld with amended claims. During appeal by the proprietor and an opponent, the Board revoked the patent for added subject-matter.

The proprietor-appellant filed a petition for review under Article 112a EPC against the decision of the Board. The petition lists various grounds, as enumerated below.

The EBA discusses the admissability and allowability of these grounds, including whether a counter-argument put forward during oral proceedings also represents a formal objection under Rule 106 EPC (admissibility of ground D), whether the right to be heard is violated if an admission of a request is not reasoned (allowability of ground C), whether the BoA is free to determine the order in which the requests are discussed (allowability of ground C), and why it is needed for the petition to already contain the specific arguments w.r.t. a fundamental violation of Article 113 EPC (rather than those being specified in a later response or during oral proceedings) (allowability of ground D)

Catchwords:
1. Only parties adversely affected by a decision may resort to a procedure under Article 112a EPC. The term 'fundamental violation' in Article 112a(2)(c) EPC also must be read in this light. An alleged violation cannot be fundamental, in the sense of 'intolerable', if it does not cause an adverse effect. (Reasons, point 23).

2. The principle of party disposition expressed in Article 113(2) EPC does not extend so as to permit a party to dictate how and in which order a deciding body of the EPO may examine the subject-matter before it. The only obligation on the EPO is not to overlook any still pending request in the final decision. A Board has no particular duty to give reasons why it chose to proceed as it did (Reasons, point 25).

3. A Board has no obligation to peruse the whole file of the first instance proceedings. It is the duty of the parties to raise issues again in the appeal proceedings, to the extent necessary, as stipulated by Articles 12(1) and (2) RPBA: "Appeal proceedings shall be based on [the submissions of the parties filed in the appeal proceedings, which] ... should specify expressly all the facts, arguments and evidence relied on" (Reasons, point 38).

The petition grounds:
XI. Right to be heard violations, Art. 112a(2)(c) and 113 EPC

A. The written decision of the Board contained no reasons why the claims as upheld by the Opposition Division were not allowable, thus not permitting the petitioner to understand why the decision under appeal was reversed.

B. The Board's decision did not explain what happened to the earlier withdrawn requests, but only referred to the petitioner's final requests that it confirmed at the end of the oral proceedings.

C. The decision contained no reasons why the main request was admitted, and why this decision was only made after the decision not to admit the later withdrawn auxiliary requests. This lack of reasons in the decision violated the petitioner's right to be heard, because arguments need not only be heard, but also must be acknowledged in a decision of the EPO.

D. The Board did not consider the main arguments of the petitioner, why the "only two bearing" feature does not add subject-matter. (...). The petitioner also submitted that the arguments not mentioned could well have changed the outcome of the decision.

XII. Fundamental procedural defect, Art. 112a(2)(d) EPC

E. The Board did not decide on a request pursuant to Rule 104(b) EPC, in that the main request was discussed and decided on only after a discussion and decision on the claims as upheld. In this respect, the petitioner raised an objection under Rule 106 EPC.

XIV. Further procedural violations

F. The petitioner was led into the inescapable trap of Article 123(2)/(3) EPC by the Examining Division, i.e. the European Patent Organisation itself provoked the error.

G. The petitioner lost its patent on a 'formalistic issue', against the spirit of Article 4(3) EPC, and after having spent considerable sums.

H. The considerations underlying petition grounds F and G were not taken into account by the Board, when revoking the patent, in full knowledge of pending parallel infringement actions.

Tuesday, January 30, 2018 T 2101/14 – Not admissible if not promptly substantiated

The applicant filed an appeal against a decision of the Examining Division refusing applicant’s European patent application. With the statements of the grounds of appeal, the applicant forwarded a new set of claims not previously presented during examination. In a preliminary assessment of the claims, the Board expressed its concerns about the introduction of a new unsearched feature.

In order to obviate the Board’s concerns, the applicant presented a further set of new claims. Since this further set of new claims was based on a suggestion for an allowable claim of the Examining Division, the applicant did not consider necessary to file substantiating arguments in support of this new request. Only during oral proceedings the applicant substantiated the patentability of the further set of new claims.

For the Board, an unsubstantiated request becomes effective at the date on which the request is substantiated (T 1732/10) and thus too late in the present case because it would have inevitably required an adjournment of the oral proceedings, which is excluded by Article 13(3) RPBA. Thereby the Board refused to admit the further set of new claims into the proceedings even if the claims were filed well before arrangement of the oral proceedings and dismissed the appeal.

Tuesday, October 24, 2017 T 1972/13 - Examination at an end?

With his response "R3" to summons for oral proceedings, the applicant filed amended claims of respectively a main and an auxiliary request, together with arguments. In addition, the applicant requested "cancellation of the oral proceedings and the continuation of the examination in writing, possibly supplemented by a telephone interview with the primary examiner, if the Examination Division deems it expedient". Subsidiarily it was requested "that the oral proceedings are conducted by video-conference, using IP technology; and that the date of the oral proceedings is changed". Shortly after, the applicant's representative contacted the primary examiner by telephone asking "whether the proceedings could be cancelled, and if not whether they could be postponed ... or held by visio [sic] conference". The examiner replied "that he would have a look at the case and at the internal instructions before giving an answer" (idem). With a communication a few weeks later, the applicant was informed that the oral proceedings were cancelled and that the procedure would be continued in writing. Subsequently, the decision to refuse the application was issued. In its reasons, it said "The examining division consented to the request of the applicant to cancel the oral proceedings and to continue the examination in writing, thereby issuing this decision." The applicant appealed.

Friday, November 11, 2016 R 1/15 - Petitioning for review of an insufficiently substantiated decision

In this petition for review, the petitioner (being the patent proprietor) asserts that the Board of Appeal relied in their decision on common general knowledge which the proprietor was unable to comment on. As such, the petitioner asserts that a fundamental violation of Article 113 occurred, which would be a valid ground for petition for review in accordance with Art. 112a(2c) EPC.

However, the Enlarged Board of Appeal concludes that the petition essentially is based on the assertion that the Board of Appeal insufficiently substantiated their decision, which is not one of the grounds for petition for review as enumerated by Art. 112a EPC. With reference to R 1/08 and R 22/10, the EBoA does acknowledge that while an insufficiently substantiated decision is in itself not a valid ground for petition for review, it may serve as  proof of the BoA not acknowledging a presentation of a party or taking such presentation into account in their decision-making process. The petitioner failed to assert such a violation. As such, the petition for review is deemed unallowable.

Tuesday, October 11, 2016 T 1647/15 - The eyes of an objective observer

In this opposition appeal, three opponents requested that the Opposition Division's decision  be set aside for bias of at least one member of the Opposition Division and that the case be remitted for rehearing before an Opposition Division in a different composition or, in the alternative, that at least one of the questions the Opponents be referred to the Enlarged Board of Appeal, or that the Opposition Division's decision be set aside for violation of the right to be heard and that the case be remitted to the Opposition Division, or that the Opposition Division's decision be set aside insofar as the Opponents are adversely affected and that patent be revoked. A first indication of the alleged partiality was that the representative of Opponent III, on the second day of the oral proceedings, was interrupted by the chairman saying: "Shut your mouth" and "Don't speak any more". The chairman, being asked whether he would confirm this wording, expressed that he would neither regret what he just said, nor "take anything back". The opponents submitted that tis was a clear indication of a personal aversion of the chairman against the representative of Opponent III, and that it was also obvious that this personal animosity negatively affected the ability of the chairman to hear Opponent III with an objective judicial mind. According to the opponents, the Opposition Division made a fundamental procedural violation in deciding itself to reject the then raised objection of suspected partiality by Opponent III. The provisions of Article 24(3) EPC should have been applied to the members of the Opposition Division. The refusal of the Opposition Division to agree to the correction of the minutes of the oral proceedings requested by the Opponents was submitted to be a further indication of partiality. The minutes were deliberately written so as to misinterpret what had happened and was said during the oral proceedings. What did the Board decide?

Tuesday, September 06, 2016 T 738/13 Right to be heard

In this appeal from examination, the Board has to decide if the Examining Division has violated the applicant’s right to be heard by not motivating its decision well.

The applicant had requested supplementing the Examining Division by a legally qualified examiner. This was refused and motivated only by citing the relevant section of the Guidelines. The Board sympathizes with the applicant but finds in this case the brief motivation acceptable.

The Board does agree that the lack of inventive step decision is not adequately reasoned. The applicant had submitted a thorough problem-solution approach reasoning. The division is silent in its decision on this reasoning. The Board considers submitting the case back, but first spots a new clarity issue. The Boards takes this upon its own shoulders. The applicant manages to overcome the Art.84 objection. The Board then submits the case back for further examination.

Tuesday, July 26, 2016 T 803/12 - No right to two instances

In continuation of the patent being revoked in opposition due to lack of sufficiency of disclosure, the proprietor appeals the decision. The proprietor requests the case to be remitted to the Opposition Division as he is of the opinion the his right to be heard has been violated and that he is entitled to be heard in two instances according to Art. 32 of the TRIPS agreement and based on Art. 125 EPC, Furthermore, the proprietor requests the Board to order a correction of the minutes of the oral proceedings before the Opposition Division.

The Board disagrees with the proprietor in all aspects. The case is not remitted, the minutes are not corrected and the patent remains revoked.

Tuesday, June 14, 2016 R 04/14 - Late filed request vs. right to be heard

This petition for review relates to whether or not non-admissibility of a late filed request can be in conflict with the right to be heard under Art. 113(1) EPC, either because of a surprising development of the case, or because of “prima facie” assessment of the allowability of the request.

In the underlying appeal proceedings, the petitioner’s (=proprietor’s) only pending request was not allowed due to lack of clarity. The petitioner was surprised that the discussion of clarity of this particular feature was resumed in the second oral proceedings. The Board had indicated in its summons to the second oral proceedings, that clarity of other features were to be discussed and that it should not be necessary to repeat the argument presented in the first oral proceedings (where this feature had been discussed but not decided on). However, respondent III had indicated in its response, that it still considered it relevant to discuss the clarity of the feature in question.

At the beginning of the second oral proceedings, the petitioner only had one request on file. This request is found unallowable due to lack to clarity. The petitioner filed a new main request during the oral proceedings, which request was not admitted into the proceedings.

The questions here addressed by the Enlarged Board of Appeal are therefore:

1. Can the Petitioner objectively be considered to have been surprised by the Board’s decision in the second oral proceedings?, and

2. Can a “prima facie” assessment of the allowability of a request constitute a violation of the right to be heard?

Friday, February 12, 2016 R 0018/14 - Different understanding of issue

"The poetry of logic"

In this petition for review, the petitioner argued that its right to be heard has been fundamentally violated in that the debate which took place during oral proceedings lacked essential aspects in respect of novelty of independent claim 1; these only appeared in the reasoning of the written decision and were said to be entirely new for the petitioner.

During oral proceedings before the Enlarged Board, the petitioner explained that when a Board of Appeal intends, as in the present case, to depart from a common logical reasoning, it should inform the parties in advance so that they have an opportunity to react in an appropriate manner.

Friday, July 10, 2015 T 698/10: Problem not mentioned in closest prior art

The closest prior art and the objective technical problem were disputed because the closest prior art does not mention the problem of the claimed invention. This appeal lies from a decision of the Examining Division to refuse a patent for an invention that relates to the Audio Video Coding Standard of China (AVS). The Board of Appeal clearly discusses the inventive step of the invention. In this discussion the above mentioned objections of the Appellant (Applicant) are discussed extensively. The Applicant also considered his right to be heard violated. The Board also provides a clear discussion of this subject at the end of the decision.

Tuesday, June 30, 2015 T 1775/12 - Second Oral Proceedings

If an application is granted on a request filed during oral proceedings, does that applicant have a right to second oral proceedings if that request is refused? 

To set the context, I'll summarize the prosecution history. In 2008 this application was filed as one of four divisionals. During prosecution two official communications were sent under art. 94(3), after each of which an amended claim set was filed. In response to a summons for oral proceedings a further amended claim set was filed. During the oral proceedings, an auxiliary request was filed, followed by an amended auxiliary request. The latter was then granted.

After receiving the intention to grant communication (R.71(3)), the applicant files a new request. The new claim set has been broadened with respect to the granted claim set by deleting a feature. In the ensuing correspondence, the applicant request new oral proceedings "as a matter of precaution", however the Examining division now refuses the application without granting a second oral proceeding.

The board of appeal sides with the applicant and finds that his right to be heard was violated. The case is remitted and a second oral proceeding is to be held. It appears however, that the second oral proceedings may be limited to the issue of admissibility.

The board provided the following catchwords: