What happens when the EPO fails to uphold the principle of legitimate expectations?

French version available here

Introduction

In Case T1588/22, the European Patent Office (EPO) Board of Appeal addressed a significant procedural issue involving the principle of legitimate expectations and the applicant’s right to be heard. The decision highlighted critical procedural violations by the Examining Division, particularly the issuance of a refusal decision without adhering to previously communicated steps or providing the applicant with an opportunity to present further arguments.

This case underscores the EPO's obligation to maintain clear and transparent communication throughout the patent examination process, ensuring procedural fairness and respect for applicants' rights.

Summary of the Invention

The invention concerns a composition for the thermal insulation of building wall surfaces and its application process. The core innovation lies in a specialized coating composition that enhances the thermal insulation properties of walls while offering durability and ease of application. Key features include:

Thermal Insulation Properties: A composition designed to reduce heat transfer, improving energy efficiency in buildings.

Durability: Resistance to environmental wear and tear, ensuring long-term performance.

Ease of Application: A user-friendly application process that simplifies use in construction projects.

The invention aims to address energy efficiency challenges in modern buildings by providing a reliable, scalable solution for thermal insulation.

Key Points of the Decision

1. Procedural Background

The Examining Division had raised objections under Article 123(2) EPC concerning added subject-matter in the claims. In response, the applicant submitted revised claim sets and awaited further communication, including a potential summons for oral proceedings.

However, contrary to its own communications, the Examining Division issued a refusal decision without:

• Scheduling oral proceedings (previously indicated as the next step in the process).
• Allowing the applicant an opportunity to respond to the outstanding objections.

This sudden decision violated the applicant's legitimate expectation that further communication or oral proceedings would precede any final decision.

2. The Principle of Legitimate Expectations

The Board emphasized that the principle of legitimate expectations, established in decision G 2/97, obligates the EPO to communicate clearly and transparently with applicants. This principle ensures that applicants can reasonably rely on prior communications and procedural indications.

The Examining Division’s earlier communication stated that oral proceedings would follow if the revised claims were not allowable. The applicant, therefore, had a legitimate expectation that no refusal decision would be issued without this step.

The Board found that the Examining Division’s actions deprived the applicant of the opportunity to present further arguments or amendments, violating Article 113(1) EPC, which guarantees the right to be heard.

3. Arguments

Applicant’s Position:

• The applicant argued that the refusal decision came as a surprise, given the Examining Division’s previous assurances about the procedural sequence.
• The sudden decision deprived them of their procedural right to present counterarguments or request oral proceedings.

Examining Division’s Position:

• The Examining Division justified its decision by stating that the applicant had not explicitly requested oral proceedings in their latest submissions. It also argued that all objections had been communicated earlier, providing the applicant with adequate opportunities to respond.

4. Board of Appeal’s Analysis and Findings

The Board rejected the Examining Division’s reasoning, noting that:

• Communication Obligations: The EPO must clearly outline procedural steps and adhere to them. Misleading or ambiguous communications undermine applicants’ trust in the procedural system.
• Right to Be Heard: Even if oral proceedings were not explicitly requested, the Examining Division had indicated they would be scheduled. The applicant had a reasonable expectation of this step, making the sudden refusal decision procedurally unfair.
• Substantial Procedural Violation: The failure to respect the principles of legitimate expectations and the applicant’s right to be heard constituted a significant procedural violation.

Final Outcome

The Board of Appeal:

1. Set aside the refusal decision.
2. Remitted the case to the Examining Division for further prosecution.
3. Ordered a reimbursement of the appeal fee under Rule 103(1)(a) EPC, acknowledging the substantial procedural violation.

Lessons to Be Learned

1. Adhere to Procedural Clarity: Examiners must provide clear and consistent communication, ensuring applicants can rely on procedural indications.
2. Respect the Right to Be Heard: Article 113(1) EPC guarantees applicants an opportunity to present arguments before any decision. Violating this right risks procedural fairness and undermines trust in the EPO system.
3. Legitimate Expectations Are Binding: The principle of legitimate expectations, rooted in European case law, ensures that applicants can trust the EPO’s communications. Missteps in this regard can lead to procedural violations and reversals.
4. Proactive Engagement by Applicants: While this case highlights the EPO’s obligations, applicants should proactively confirm procedural steps and address any ambiguities in communications to avoid surprises.

Conclusion

Case T 1588/22 serves as a vital reminder of the EPO’s responsibility to uphold procedural fairness and maintain trust in its examination processes. The decision underscores the critical role of clear communication, respect for procedural rights, and adherence to established principles like legitimate expectations. For applicants, this case reinforces the importance of actively monitoring procedural developments and challenging any deviations from expected standard.ds.

Link to the case : HERE

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Legal Disclaimer

The information provided in this blog post is for generalinformational purposes only and does not constitute legal advice. The summary and analysis of the EPO case are based on publicly available information and are intended to offer insights into the decision and its implications. This content should not be used as a substitute for professional legal advice tailored to your specific circumstances. For advice related to any specific legal matters, you should consult a qualified attorney.