The applicant filed an appeal after the Examining Division (ED) had refused his patent application. Here are some relevant details relating to the examination proceedings. There were oral proceedings (OPs) on November 15, 2007. The ED announced that it could not grant the main request on file but that the auxiliary request was allowable. The ED then sent a communication under R 51(4) based on the auxiliary request. In its response, the applicant did not agree with the text proposed by the ED and requested an appealable decision. Since the ED had changed, the applicant was summoned to OPs to be held on July 28, 2009. These OPs were limited to a discussion of the main request only. In a letter dated June 4, 2009, the applicant withdrew the main request "in favour of the auxiliary request" and submitted that "it is thus believed that the OPs can be cancelled and that a fresh R 71(3) EPC communication can be issued …" The ED maintained the OPs. On the day before the OPs, the applicant informed the ED that he would not attend and added that he hoped that "a further R 71(3) communication can be issued on the basis of the claims and description previously agreed. Any other decision in these circumstances will run the risk of being a substantive procedural violation." The ED decided to refuse the application. It held that there were two contradictory statements by the applicant, namely that he did not agree with the proposed text for grant (i.e. of the auxiliary request in the letter of March 17, 2008) and that he was withdrawing the main request in favour of the auxiliary request (faxed letter dated June 4, 2009). Though the first statement was regarded as an express disapproval of the auxiliary request, the second could not be regarded as a clear and express approval of the text (see T 549/96 [4.1]). Further, the ED saw no legal basis for a "re-issuing" of a R 51(4) EPC 1973/R 71(3) communication on the same unamended request. Following the appeal, the ED granted interlocutory revision but refused reimbursement of the appeal fee. In what follows the Board deals with the allowability of the appeal:  The appeal is allowable. R 67, first sentence, EPC 1973 states that the reimbursement of appeal fees is to be ordered in the event of interlocutory revision if such reimbursement is equitable by reason of a substantial procedural violation.  There is no need to decide whether the indication in the summons dated 29 April 2009 to the new OPs that "the issue to be discussed will be … only whether the Main Request fulfils the requirement of patentability" at that stage of the grant proceedings constitutes a restriction depriving the applicant of a decision based on a text of his own choosing, as alleged by the appellant, thus contravening A 113(2) and constituting a substantial procedural violation.  In any case, there is a substantial procedural violation in the reasoning of the ED in its impugned decision dated 12 August 2009 that there are contradictory statements by the applicant in the letter dated 17 March 2008 on the one hand and in the letter dated 4 June 2009 on the other with respect to the auxiliary request and that there is therefore no clear and express approval of the text for grant according to the auxiliary request, so that the patent application is to be refused. A proper interpretation and reading of the applicant's letters dated 4 June 2009 and 27 July 2009 according to their wording and to the expressed intention cannot reasonably justify and substantiate the conclusion drawn by the ED.  At first glance there can be no doubt, nor is it disputed, that the letter dated 17 March 2008 contains a clear and unambiguous statement that the text proposed for grant is not approved by the applicant and an appealable decision on the main request is requested.  However, the explicit declaration in the letter dated 4 June 2009 that the applicant "withdraw[s] the Main Request" is equally clear and unequivocal in its meaning as required e.g. in decision T 549/96 [4.1], also cited in the decision under appeal. As a consequence, there was no longer any basis for a decision on the main request. The further statement that the main request is withdrawn "in favour of the Auxiliary Request" therefore on objective evaluation leaves no doubt that the applicant now seeks to have the auxiliary request granted, particularly when taking into account that only these two requests for grant, namely the main request and the (single) auxiliary request, were on file. In addition, this interpretation is strongly supported by the second sentence of the said letter, which says that "it is thus believed that the OPs can be cancelled and that a fresh R 71(3) Communication can be issued." There appears to be no other explanation how this in combination with the foregoing declaration could be understood as the wish and request of the applicant that (now) the patent should be granted on the basis of the auxiliary request. Otherwise the request for a new R 71(3) communication would have made no sense at all.  With regard to the content of the applicant's letter dated 4 June 2009, the procedural response of the ED in sending the "Brief Communication" merely informing the applicant that the date for OPs on 28 July 2009 was maintained constitutes a disregard of the applicant's submission and thus a procedural violation, in particular of the right to be heard under A 113(1). This communication neither gives any reasons why the ED refused the applicant's requests nor reveals that these declarations had at least been taken into consideration. According to the case law of the boards of appeal, it is not sufficient to observe A 113(1) merely formally by granting the applicant the procedural opportunity to present comments, as was the case here. This procedural step falls short of its legislative purpose and remains a pure formality if there is no trace in the file that such comments were indeed read and discussed on the merits, beyond a mere acknowledgment of their existence. In summary, A 113(1) does not merely require a party to be given an opportunity to voice comments; more importantly, it requires the deciding instance to demonstrably hear and consider them (T 763/04 [4.4]; T 246/08 [2.6]). Therefore in view of the clear declarations of the applicant, the ED should have cancelled the date for OPs, issued a new R 71(3) communication or – if it still had doubts in respect of a clear approval of the text for grant – clarified the requests instead of merely informing the applicant that the date for OPs was maintained, which is legally and procedurally an inadequate response under the given circumstances.  Even the applicant's faxed letter dated 27 July 2009, in which it referred to its letter dated 4 June 2009 and inter alia expressed the hope that "… a further R 71(3) Communication can be issued on the basis of the claims and description previously agreed" and added that "Any other decision in these circumstances will run the risk of being a substantive procedural violation", obviously did not cause the ED to reconsider the unequivocally declared consent of the applicant to the grant of a patent according to the auxiliary request already previously agreed and to reverse its own decision to maintain the date of the OPs.  At the latest after the filing of the letter dated 27 July 2009 the requirements for a new R 71(3) communication were met, since in it the applicant again expressed his approval for the granting of a patent on the basis of the auxiliary request previously agreed sufficiently clearly and beyond any reasonable doubt. At that stage at the latest, if the ED felt that there still were "contradictory statements", according to the case law of the boards of appeal (T 666/90, T 552/97, T 355/03) it was obliged to rectify the misunderstanding and clarify the applicant's true intention, instead of merely informing the applicant that the date for OPs was maintained and finally issuing the decision which is under appeal. This applies all the more because the applicant had already explicitly asked for confirmation of his declarations in his letter dated 4 June 2009. The fact that the appellant did not attend the OPs on 28 July 2009 is immaterial for the present decision, because the relevant substantial procedural violation occurred before the OPs were held and furthermore the applicant could only have declared the same as he had already done in a sufficiently clear manner in his letters dated 4 June 2009 and 27 July 2009.  Under A 113(2) the EPO may examine and decide upon the European patent application only in the text submitted to it by the applicant. A 113(2) is considered a fundamental procedural principle, being part of the right to be heard (see Case Law of the Boards of Appeal of the EPO, 5th edition, VI.B.4.). According to this case law the said procedural principle is of such fundamental importance that any infringement of it, even as the result of a mistaken interpretation of a request, has to be considered to be a substantial procedural violation (T 552/97; T 647/93).  Under these circumstances the requirements of A 67 EPC 1973 are met. The ED rectified its decision by means of interlocutory revision. The above-mentioned substantial procedural violation led to the contested decision (refusal of the patent application) of the ED. In order to overturn this decision the applicant had to file an effective appeal, including the payment of the associated appeal fee. Hence, it appears equitable to reimburse the appeal fee.  By communication under R 71(3) dated 16 February 2010 the ED correctly and in accordance with the informed the applicant that it intended to grant a European patent on the basis of the (unamended) auxiliary request already agreed in the course of the grant procedure after receipt of a R 51(4) EPC 1973 communication. Obviously the examining decision (sic) did not uphold the further ground for the refusal of the patent application indicated in the decision under appeal that the "re-issuing of a R 71(3) communication on the same unamended request is neither foreseen nor justified".  Even though it is not decisive for the decision in the present appeal proceedings, the sole subject-matter of which is the request for reimbursement of the appeal fee for reasons of equity, the board considers it appropriate to make the following additional remark. Contrary to the said ruling of the ED in the decision under appeal, the crucial question to be raised is not whether the EPC provides a basis for the re-issuing of a R 71(3) communication on the same unamended request, but rather whether it provides a proper legal basis for the decision to refuse a request for such a re-issuing. From the legal point of view the refusal of a request for re-issuing of a R 71(3) communication on the same unamended patent application, as in the present case, constitutes an administrative act detrimental to the applicant. In order to be effective, such an administrative act requires a legal basis either in terms of an explicit legislative provision in the EPC providing for the respective legal consequence under the particular facts and circumstances or, in the absence of such a regulation, the existence of a general principle of law, developed and stated by case law or the presence of other higher-ranking legitimate interests of the parties to the proceedings or of the public overriding the interest of the applicant in getting a re-issued R 71(3) communication. However, no such legal basis has been indicated by the ED, nor is such a basis obvious or discernible. NB: You might be aware that new R 71(6), which will enter into force on April 1, 2012, explicitly provides for re-issuing of R 71(3) communications: see the Decision of the Administrative Council of 26 October 2010, OJ 12/10, 637 : (6) If the applicant, within the period under paragraph 3, requests reasoned amendments or corrections to the communicated text or keeps to the latest text submitted by him, the ED shall issue a new communication under paragraph 3 if it gives its consent; otherwise it shall resume the examination proceedings. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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