EP 2 986 679 A1 relates to a composition for the thermal insulation of building wall surfaces and application process thereof.
Brief outline of the case
The application was refused and the applicant appealed.
The board held that the ED committed a SPV by not respecting the protection of the applicant’s legitimate expectations of the applicant.
The ED’s dealing with the case
After resuming examination after the communication under R 71(3), the ED issued a communication and raised an objection under Art 123(2) against the subject-matter of claim 1 of the request then under consideration.
The last paragraph of the communication reads as follows:
“The applicant may choose to amend the claim set as previously proposed by the examining division (see the text intended for grant dated 01.06.2021) and thereby lead to the grant of the present application. They may also choose to submit further arguments along with a new claim set satisfying the requirements of EPC. In the latter case the applicant is kindly reminded that the examination procedure would continue with OP for the sake of efficiency and better communication.”
The applicant filed a reply to the communication and a new set of claims.
The applicant later filed an enquiry as to when the EPO would deliver the next communication.
The ED issued a communication in response to the enquiry and stated that it would supply a communication within two months.
Roughly a month later, the ED issued a decision refusing the application based on the claims filed.
The board’s decision
For the board, the ED’s announcement, that the applicant “may also choose to submit further arguments along with a new claim set satisfying the requirements of EPC. In the latter case the applicant is kindly reminded that the examination procedure would continue with OP for the sake of efficiency and better communication“, appears nonsensical or at least misleading in the given circumstances.
The only way for the applicant to make sense of the ED’s statement was to assume that this statement actually meant to refer to a situation where a new claim set was filed that would NOT meet the requirements of the EPC, in which case the proceedings would be continued with the holding of OP.
This created the legitimate expectation on the applicant’s part that, after having filed a new set of claims, these claims would either be found allowable or OP would be held and that, in the latter case, the applicanant would have the opportunity to provide, during the OP, submissions on the allowability of the set of claims.
In the same way, the ED’s communication announcing a further action within two months, created the legitimate expectation that the applicant would have the opportunity to receive a communication or at least a summons to OP in response to the set of claims filed.
In view of the various communications issued by the ED, the applicant could not have expected as the next action that a decision refusing the application would be issued.
For the board it followed that instant issuance of the decision of the ED refusing the application was a surprise for the applicant.
Thus, the principle of the protection of legitimate expectations has not been observed in the case at hand.
In its refusal decision, the ED stated:
“Issue of a decision is possible since the applicant did not request in any of their responses, including the last one received, OP in view of Art 116(2) [sic]. Additionally, all the objections mentioned in this refusal had already been communicated to the applicant more than once, where they had a chance to provide counter-arguments or submit amendments in order to overcome said objections. Hence, the applicant’s right to be heard in view of Art 113 is respected.”
The board did not agree. Even if the applicant had not submitted any request for OP, the ED had created the legitimate expectation that rather than a decision to refuse the application, the next step would be either OP, arranged by the ED of its own motion in accordance with Art 116(1) as considered expedient, or a further communication.
In view of these legitimate expectations, the applicant had to assume that it would be given a further opportunity to provide counterarguments or submit amendments prior to any decision to refuse its application.
Issuance of the decision refusing the application without holding OP or issuing a further communication as announced, had thus the effect of depriving the applicant of any such further possibility to provide comments.
Consequently, the applicant’s right to be heard has been violated. The ED’s decision to refuse the application thus constitutes a substantial procedural violation.
Comments
It has first to be noted that in the communication under R 71(3), the ED deleted ex officio a statement objected to as representing an intermediate generalisation, under the pretext, that the objection had been raised in a previous communication. The applicant did not agree with the proposed text and examination was resumed.
The ED’s communication gave the choice to the applicant between acceptance of the amendments proposed in the communication under R 71(3), or having to expect as continuation of the procedure with an OP in order to close the case.
In this communication, the ED did however raise the legitimate expectation that, in case of not accepting the amendment, OP would follow.
Taking later pretext that the applicant did not request OP to close the procedure with a refusal, is in no way acceptabe.
The present decision shows once more the arm twisting of applicants by amending claims in the communication under R 71(3). Only typos and minor corrections should be carried out, or at least the applicant has to be informed beforehand.
The present case shows also that the working of the ED can be considered as sub-optimal. At least the chair of the ED should have spotted the problem.
Examiners should not exclusively be driven by production/productivity. They are actually not primarily responsible for this drive.
In T 903/00, it was held that applicant’s statement “in the hope to avoid OP” was considered as a request for OP in view of the history of the case. A refusal two years later without any warning, was deemed against the protection of legitimate expectations,
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