This case deals with an appeal after the Examining Division refused a request for further processing.
In a second communication, the Examining Division had in a very brief reasoning objected against the claims "While the larger part of the claims are considered now in unity ... it is not understandable how the present claim 12 could result in unity with all the preceding claims".
The representatve did not respond in time and thus had to request further processing. In an also very brief response to the communication, the following substantive remarks were made "...the Applicant respectfully disagrees, especially with regard to claim 12. It is believed that the invention as currently claimed is both novel and involves and (sic) inventive step in accordance with Articles 54 and 56 EPC, and the claims should be allowable. Reconsideration of the application is requested, and Oral Proceedings are requested in the event the Examiner is minded to refuse the application".
The Examining Division rejected the request for further processing and gave the following reasons for its decision "Under current EPO practice, as decided in the 50th PPC Meeting of 24-25 September 2009, a reply to a communication from the Examining Division without any substantive observations or amendments, does NOT constitute a reply to a communication under Article 94(3) EPC. The omitted act was not filed within the time limit set in Article 121 EPC. The request for further processing is therefore rejected".
An issue to be settled by the Board of Appeal was whether the request for oral proceedings was phrased in such a way that the Examining Division should have granted it.
On a personal note from the blogger: to me the approach and argumentation of the Examining Division is highly surprising. A PPC meeting cannot be seen as any legal basis, let alone for a step with serious consequences. Had this response of the applicant been filed in time, no doubt the Examining Division would have gone for a refusal/oral proceedings, thus accepting that a response was filed and that the applicant had now been heard. It seems unlikely that the Examining Division would have send out a R.112 'deemed withdrawal', which is the proper response of the EPO if no response is timely filed by the Applicant. In a proper working legal system it cannot be left to the mood of the Examining Division to decide on how to deal with a response. Unfortunately, the Board did not get to the point to comment on this matter.
Catchwords:
An adverse decision issued without granting the aggrieved party's request for oral proceedings must be declared void ab initio and without legal effect. Silence on the part of the appellant cannot be interpreted as withdrawal of the request for oral proceedings - see points 7 and 8 of the Reasons.