EP 3 338 077 A1=WO 2017/029344 A1 relates to a system and method for laser based internal analysis of gases in a human body.
Brief outline of the case
The ED refused the application by not admitting some requests, considered one comprising added-matter and the last one lacking (AR3a) clarity.
The applicant appealed.
In appeal, the applicant kept as sole request AR3a and claimed that its right to be heard had been violated.
The board held that the right to be heard was not violated and remitted as AR3a was deemed clear by the board.
The applicant’s point of view on the violation of the right to be heard
New clarity objections were raised by the ED in a telephone conversation which took place only two days before the OP. The majority of these objections could have been raised in the opinion accompanying the summons to OP. In this respect the applicant referred to the Guidelines, at the time E-III 8.3.3.3.
The Guidelines specify that in examination proceedings, the annex to the summons to oral proceedings must include all the objections that are likely to be discussed during OP.
The applicant further argued that based on the understanding of these objections from the telephone call, new requests had to be hastily prepared and submitted before the OP.
The applicant had thus been deprived of a fair hearing and their right to be heard had been violated, especially as the ED did not fully acknowledge that they raised these objections only two days before the hearing and still applied the clear allowability criterion for examining if the new requests were allowable.
This criterion was too strict considering the short time the applicant had to prepare the new requests in view of new objections raised in view of Art 84
Either the requests should have been “allowed in”, or the requests should have been considered allowable if they overcame the objections raised during the telephone conversation.
The board’s decision on the violation of the right to be heard
No violation of the right to be heard
In the period between the summons to OP and the OP, the applicant filed two sets of claims.
During the OP all requests filed on the day before the OP were discussed with respect to their admittance and, for those admitted, with respect to their allowability under Art 123(2) and 84.
For the board, the decision under appeal is therefore based on objections discussed during the OP, i.e. on grounds on which the appellant had an opportunity to present their comments.
On the lack of time to file new requests
When an applicant submits amended claims in response to the summons to OP, they have to be aware that their admittance and, if admitted, their allowability will be discussed during the OP.
The applicant can then react to new objections, e.g. by filing further amended claims during the OP.
If the applicant is of the opinion that they do not have enough time for an adequate response during the OP, it is their duty to either request more time or a postponement of the OP.
The board noted that in the present case the applicant filed a further amended set of claims according to AR 3a one day before the OP, which was admitted and discussed in substance by the examining division.
The minutes of the OP do not indicate that the applicant asked for more time or requested postponement of the OP.
The board was therefore of the opinion that the applicant has not established that it had not been given enough time to react to all objections on which the appealed decision is based.
As a further consequence, the board did not concur with the applicant that either the requests should have been “allowed in” or have been considered allowable if they overcame the objections raised by the examiner over telephone two days before the OP.
No matter whether “allowed in” relates to the MR and AR 1, 2 and 4 to 8 that were not admitted to the proceedings or/and AR 3 and 3a that were admitted but not allowed, as stated, it would have been for the applicant to request more time for defending its case if it had so wished.
Comments
It can be agreed with the board, that an ED can raise objections, not just before an OP, but even during OP.
Among the conditions in order for the right to be heard to be respected, is first to give the applicant the possibility to file requests attempting to overcome any objection raised shortly before or during the OP. Whether those are admissible or allowable is a different matter.
If the reasons for non-admissibility and/or the non-allowability have been discussed with the applicant during the OP, then the right to be heard has been respected.
The fact that an ED comes with new objections shortly before an OP is simply due to the fact that the ED did not discuss the case in a great detail beforehand. As examiners are, nowadays, barely sitting together in the office, this is not a surprise.
Other decisions on the topic
In T 2486/19, commented in this blog, the ED raised a new objection during OP. As the applicant did not request a long brake or postponement of the OP and replied in substance to the new objection, its right to be heard had not been violated.
In T 248/92, a similar situation occurred.
On the other hand, in T 2235/12 the ED introduced two new documents two days before the OP and raised a new N objection based on one of those documents. By not postponing the OP, the ED violated the applicant’s right to be heard.
EDs are reluctant to postpone OP, but if applicants would regularly request postponement of OP when confronted with late objections of EDs, this might induce a change in the behaviour of the latter.
Similar situation in opposition
In T 2036/22, also commented in this blog, Opponent 1 filed experimental report D41 during the OP. D 41 was admitted by the OD and was taken into account in the decision. The board noted that the proprietor discussed the content of D41 during the OP, that no request for postponement of the OP was filed, and hence the right to be heard of the proprietor was not violated.
General conclusion
In presence of late submissions submitted after the time limit set pursuant R 116(1), or during an OP, before a division of first instance, the admissibility of the late submission has first to be queried by the party confronted with a late submission. If the late submission is admitted in the procedure, should not hesitate in requesting more time or even postponement of the OP before .
Before BAs, the chance of a late submission of being admitted is very remote in view of the RPBA.
It should however be remembered that discussing a late submission in substance renders it de facto admissible, cf. T 68/02 or T 780/05.
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